IPR2019-00127
`Petitioner’s Opposition to Patent Owner’s Motion to Strike
`
`
`
`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
`
`___________________
`
`U.S. Patent No. 9,258,698
`Inter Partes Review No. 2019-001271
`___________________
`
`
`PETITIONER’S OPPOSITION TO
`PATENT OWNER’S MOTION TO STRIKE
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1 GoPro, Inc., Garmin International, Inc., and Garmin USA, Inc. were joined as
`parties to this proceeding. Paper 27.
`
`
`
`

`

`IPR2019-00127
`Petitioner’s Opposition to Patent Owner’s Motion to Strike
`
`
`TABLE OF CONTENTS
`
`INTRODUCTION ........................................................................................... 1
`
`CELLSPIN’S MOTION SHOULD BE DENIED BECAUSE CELLSPIN
`UNREASONABLY DELAYED IN SEEKING RELIEF............................... 2
`
`I.
`
`II.
`
`III. CELLSPIN’S MOTION SHOULD BE DENIED BECAUSE THE
`ARGUMENTS AND EVIDENCE THAT IT SEEKS TO STRIKE ARE
`RESPONSIVE TO CELLSPIN’S PATENT OWNER RESPONSE .............. 4
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`G.
`
`It Was Proper for Canon to Submit Evidence and Arguments to
`Explain Why the Claims Are Obvious Under Cellspin’s Narrow
`Construction of “Paired Wireless Connection”..................................... 6
`
`It Was Proper for Canon to Submit Evidence and Arguments to
`Explain the Proper Scope of “Paired Wireless Connection” ................ 8
`
`It Was Proper for Canon to Submit Evidence and Arguments to
`Explain Why the Claims Are Obvious Under Cellspin’s Narrow
`Construction of “Cryptographic Authentication” ...............................10
`
`It Was Proper for Canon to Submit Evidence and Arguments
`Concerning Cryptographic Authentication in Security Mode 3 of the
`Bluetooth Specification .......................................................................11
`
`It Was Proper for Canon to Submit Evidence and Arguments to
`Explain Why Cellspin’s Construction of “Graphical User Interface” Is
`Improper ..............................................................................................12
`
`It Was Proper for Canon to Explain Why Cellspin Relied on an
`Overly Rigid Obviousness Standard With Respect to Ando and
`Nozaki..................................................................................................12
`
`It Was Proper for Canon to Respond to Cellspin’s Argument
`Concerning Takahashi .........................................................................13
`
`IV. CONCLUSION ..............................................................................................15
`
`
`
`
`
`
`
`
`
`
`- i -
`
`
`
`

`

`IPR2019-00127
`Petitioner’s Opposition to Patent Owner’s Motion to Strike
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Page
`
`Belden Inc. v. Berk-Tec LLC,
`805 F.3d 1064 (Fed. Cir. 2015). .................................................................8, 9
`
`Canon Inc. v. Intellectual Ventures II LLC,
`IPR2014-00631, Paper, 50 (Aug. 19, 2015) ........................................ passim
`
`KSR v. Teleflex,
`550 U.S. 398 (2007).......................................................................................13
`
`In re Keller,
`642 F.2d 413 (CCPA 1981) ...........................................................................14
`
`37 C.F.R. § 42.23(b) .............................................................................................2, 4
`
`Rules and Regulations
`
`
`
`
`
`
`- ii -
`
`
`
`

`

`IPR2019-00127
`Petitioner’s Opposition to Patent Owner’s Motion to Strike
`
`
`I.
`
`INTRODUCTION
`
`Pursuant to the Board’s December 20, 2019 Order (Paper 36), Petitioner
`
`Canon U.S.A., Inc. (“Petitioner” or “Canon”) hereby respectfully submits its
`
`opposition to Patent Owner Cellspin Soft Inc. (“Patent Owner” or “Cellspin”)’s
`
`motion to strike certain evidence and arguments submitted with Canon’s Reply.
`
`For the reasons set forth below, Cellspin’s motion to strike (“Motion” or “Mot.”)
`
`should be denied in its entirety.
`
`Canon filed its Reply on October 22, 2019. Over the next 47 days, Cellspin
`
`never requested authorization to file a motion to strike. It was only after Canon
`
`notified Cellspin that it would move to strike Cellspin’s Sur-Reply for violating the
`
`Consolidated Trial Practice Guide (“Guide”) that Cellspin decided to retaliate and
`
`pursue its own motion. This delay alone dooms Cellspin’s Motion. The Guide
`
`states that “authorization to file a motion to strike should be requested within one
`
`week of the allegedly improper submission.” Guide at 80. Here, Cellspin waited
`
`several weeks without any justification for the delay. Its Motion should be denied
`
`for this reason alone.
`
`To the extent the Board considers the merits of Cellspin’s Motion, it should
`
`be denied because the arguments and evidence submitted in Canon’s Reply are
`
`directly responsive to arguments raised in Cellspin’s Patent Owner Response. The
`
`rules and regulations governing inter partes review authorize a reply—and rebuttal
`
`
`
`
`- 1 -
`
`
`
`

`

`IPR2019-00127
`Petitioner’s Opposition to Patent Owner’s Motion to Strike
`
`evidence—for this very purpose. 37 C.F.R. § 42.23(b) (“A reply may only respond
`
`to arguments raised in the corresponding . . . patent owner response.”); Guide at 73
`
`(“A party also may submit rebuttal evidence in support of its reply.”). Here, the
`
`arguments and evidence in Canon’s Reply directly address new and improper
`
`claim construction positions, as well as obviousness arguments based on those
`
`claim constructions, that Cellspin raised for the first time in its Patent Owner
`
`Response. See Reply (Paper 24) at 3-9. It was entirely proper for Canon to submit
`
`the arguments and evidence in its Reply. See Canon Inc. v. Intellectual Ventures II
`
`LLC, IPR2014-00631, Paper 50 (Aug. 19, 2015) at 54 (“[W]e are persuaded that
`
`the challenged claim constructions, arguments, and evidence in Petitioner’s Reply
`
`respond to constructions or arguments, or both, raised in the Patent Owner
`
`Response.”).
`
`II. CELLSPIN’S MOTION SHOULD BE DENIED BECAUSE CELLSPIN
`UNREASONABLY DELAYED IN SEEKING RELIEF
`
`The Consolidate Trial Practice Guide prescribes procedures for motions to
`
`strike and states as follows: “Generally, authorization to file a motion to strike
`
`should be requested within one week of the allegedly improper submission.”
`
`Guide at 80. Here, the “allegedly improper submission” is Canon’s Reply, which
`
`Canon filed on October 22, 2019. In order to comply with the Guide, Cellspin
`
`should have requested authorization to file its motion to strike by October 29,
`
`
`
`
`- 2 -
`
`
`
`

`

`IPR2019-00127
`Petitioner’s Opposition to Patent Owner’s Motion to Strike
`
`
`2019. Id. Cellspin did not come close to meeting this deadline. Instead, it waited
`
`until December 11, 2019 to seek authorization from the Board, and only did so
`
`after Canon notified Cellspin that it intended to move to strike Cellspin’s Sur-
`
`Reply. Cellspin’s Motion appears to be motivated by retaliation rather than any
`
`legitimate argument that Canon’s Reply was improper.
`
`It also appears that Cellspin is seeking to strike Canon’s Reply and the
`
`corresponding Reply Declaration of Dr. Vijay Madisetti (Ex. 1043) as a last-
`
`minute remedy because Cellspin chose to forgo taking Dr. Madisetti’s deposition.
`
`Canon offered the deposition on November 13, 2019, and Cellspin originally
`
`agreed to take the deposition on that date. On November 8th, however, Cellspin
`
`notified Canon that it would not proceed with the deposition. If Cellspin genuinely
`
`took issue the opinions set forth in Dr. Madisetti’s Reply Declaration, it should
`
`have proceeded with his deposition in order to probe those opinions. It was
`
`improper—and in violation of the plain language in the Guide—for Cellspin to
`
`wait several weeks and then seek to strike the declaration. See Guide at 80.
`
`Accordingly, Cellspin’s Motion should be denied for impermissible delay in
`
`seeking relief.
`
`
`
`
`- 3 -
`
`
`
`

`

`IPR2019-00127
`Petitioner’s Opposition to Patent Owner’s Motion to Strike
`
`
`III. CELLSPIN’S MOTION SHOULD BE DENIED BECAUSE THE
`ARGUMENTS AND EVIDENCE THAT IT SEEKS TO STRIKE ARE
`RESPONSIVE TO CELLSPIN’S PATENT OWNER RESPONSE
`
`The rules governing inter partes review provide that a reply paper is for the
`
`purpose of responding to arguments raised in the corresponding patent owner
`
`response. 37 C.F.R. § 42.23(b). It is often the case that a patent owner response
`
`will raise new claim construction positions and present new arguments for why the
`
`challenged claims are not unpatentable based on those constructions. See, e.g.,
`
`IPR2014-00631, Paper 50 at 48. In this situation, the Board has held that it is
`
`proper for the petitioner to submit evidence and arguments in a reply to explain
`
`why the patent owner’s claim construction positions and corresponding arguments
`
`are incorrect. Id. at 50.
`
`The Board’s decision in Canon Inc. v. Intellectual Ventures illustrates this
`
`point. Id. There, the challenged claims were directed to a method for capturing
`
`images with a device, comprising the step of “entering a threshold level
`
`corresponding to the automatic image trigger condition.” Id. at 11. The Board’s
`
`institution decision found that the claim term “entering” should receive its plain
`
`and ordinary meaning and did not encompass setting a threshold level during
`
`manufacturing of the image capture device. Id. at 17. In its patent owner response,
`
`Intellectual Ventures (“IV”) argued that the term “entering” should be construed to
`
`require the user of the image capture device to enter the threshold level. Id. In its
`
`
`
`
`- 4 -
`
`
`
`

`

`IPR2019-00127
`Petitioner’s Opposition to Patent Owner’s Motion to Strike
`
`
`reply, the petitioner Canon Inc.2 argued that IV’s construction was incorrect and
`
`that the claims encompass entering a threshold level internally using an electronic
`
`device. Id. at 18-19. Canon Inc.’s reply also addressed anticipation based on the
`
`challenged construction of the term “entering.” Id. at 49.3 The reply further
`
`included an expert declaration to support its arguments regarding the challenged
`
`construction. Id. (discussing testimony of Dr. Stevenson).
`
`IV argued that Canon Inc.’s arguments and evidence should be excluded as
`
`improper in the context of a reply. Id. at 47-50. The Board rejected this argument
`
`and explained that the reply was proper because it was responsive to the claim
`
`construction position that IV raised in its patent owner response. Id. at 49 (“Patent
`
`Owner provides no evidence, however, that the challenged unpatentability
`
`arguments do not respond to arguments in the Patent Owner Response.”); id. at 50
`
`(explaining that the opinions from Dr. Stevenson “respond to arguments in the
`
`Patent Owner Response” and “supports Petitioner’s rebuttal argument that the term
`
`‘entering’ includes entry of information internally by an electronic device”).
`
`
`2 Canon Inc. is the corporate parent of the Petitioner in this proceeding.
`
`3 Specifically, Canon’s Reply argued that the prior art anticipated the claims
`
`“even under IV’s construction.” See IPR2014-00631, Paper 33 at 9, 14-15.
`
`
`
`
`- 5 -
`
`
`
`

`

`IPR2019-00127
`Petitioner’s Opposition to Patent Owner’s Motion to Strike
`
`
`Cellspin’s motion to strike should be denied for the same reason. As set
`
`forth below, the Reply arguments and evidence that Cellspin seeks to strike are
`
`directly responsive to arguments Cellspin raised in its Patent Owner Response.
`
`A.
`
`It Was Proper for Canon to Submit Evidence and Arguments to
`Explain Why the Claims Are Obvious Under Cellspin’s Narrow
`Construction of “Paired Wireless Connection”
`
`Cellspin’s Patent Owner Response argued that the phrase “paired wireless
`
`connection” should be construed to include requirements found nowhere in the
`
`‘698 Patent: “bidirectional communications link between devices which provides
`
`encrypted data exchange between the devices, and the communication link can be
`
`disconnected and reconnected without having to repeat pairing or authentication.”
`
`POR (Paper 17 ) at 23. Cellspin’s Patent Owner Response then argued that the
`
`challenged claims were not obvious based on this proposed construction. Id. at 31-
`
`32.
`
`Canon’s Reply responded directly to these argument to explain why
`
`Cellspin’s construction was incorrect, and to show that the claims are obvious even
`
`under Cellspin’s construction. Reply at 3-7, 10-14. Specifically, Canon and Dr.
`
`Madisetti explained that both of the requirements Cellspin was attempting to read
`
`into the claims were well-known optional features of Bluetooth pairing. Id. To
`
`support these positions, Canon and Dr. Madisetti cited evidence including the
`
`Bluetooth Basic Imaging Profile (“BIP”) and testimony from Cellspin’s own
`
`
`
`
`- 6 -
`
`
`
`

`

`IPR2019-00127
`Petitioner’s Opposition to Patent Owner’s Motion to Strike
`
`
`expert about known advantages of using these features. Id.; Ex. 1043 ¶¶ 11-12.
`
`Accordingly, Canon’s arguments and evidence are directly responsive to the Patent
`
`Owner Response and proper in the context of a Reply. See IPR2014-00631, Paper
`
`50 at 48-50 (allowing anticipation arguments based on IV’s construction).
`
`Furthermore, Canon could not have presented these arguments in its Petition
`
`because it could not have anticipated that Cellspin would advance such a narrow
`
`and unsupported construction. Id. As explained in Canon’s Reply, Cellspin’s
`
`construction imports two optional Bluetooth features that are not discussed in the
`
`patent specification. Reply at 3-7. Indeed, the ‘698 patent expressly states that the
`
`alleged invention is not limited to Bluetooth. Id. Canon could not have
`
`anticipated—and should not be required to anticipate—such a narrow and legally
`
`improper construction, in its Petition.
`
`Finally, there is no prejudice to Cellspin in allowing Canon to present these
`
`arguments and evidence in its Reply. Cellspin had the opportunity to submit a sur-
`
`reply and to depose Dr. Madisetti concerning the opinions set forth in his Reply
`
`Declaration, including his explanation of why Cellspin’s construction of the term
`
`“paired wireless connection” was improper, and why the claims were obvious even
`
`under Cellspin’s improper construction. The Federal Circuit has explained that the
`
`opportunity to cross examine an expert on these types of opinions resolves any
`
`prejudice that could possibly arise from arguments or evidence presented in a
`
`
`
`
`- 7 -
`
`
`
`

`

`IPR2019-00127
`Petitioner’s Opposition to Patent Owner’s Motion to Strike
`
`
`reply. See Belden Inc. v. Berk-Tec LLC, 805 F.3d 1064, 1081 (Fed. Cir. 2015).
`
`Despite having this opportunity, Cellspin chose not to depose Dr. Madisetti. Thus,
`
`any prejudice is of its own making. Id.4
`
`B.
`
`It Was Proper for Canon to Submit Evidence and Arguments to
`Explain the Proper Scope of “Paired Wireless Connection”
`
`As noted in the previous section, Cellspin’s Patent Owner Response argued
`
`that the phrase “paired wireless connection” should be construed to require two
`
`optional features from one version of the Bluetooth specification: “bidirectional
`
`communications link between devices which provides encrypted data exchange
`
`between the devices, and the communication link can be disconnected and
`
`reconnected without having to repeat pairing or authentication.” POR at 23. In its
`
`Reply, Canon explained why Cellspin’s construction was inconsistent with the
`
`‘698 patent specification and in violation of basic principles of claim construction.
`
`
`4 Additionally, as Cellspin admits on page 9 of its Motion, Canon’s Petition
`
`argued that it would have been obvious to use Bluetooth as the wireless connection
`
`mechanism in the Hiroishi and Hollstrom references in order to take advantage of
`
`increased security that results from Bluetooth’s cryptographic authentication
`
`features. See Pet. at 24-25. Thus, Cellspin has been on notice of Canon’s position
`
`that it would have been obvious to use Bluetooth in combination with these
`
`references from the outset of the proceeding. Id.
`
`
`
`
`- 8 -
`
`
`
`

`

`IPR2019-00127
`Petitioner’s Opposition to Patent Owner’s Motion to Strike
`
`
`Reply at 3-7. Canon further explained why the plain and ordinary meaning of the
`
`phrase “paired wireless connection” encompasses connections that do not include
`
`the requirements of “encrypted data exchange” and a “communications link [that]
`
`can be disconnected and reconnected without having to repeat pairing or
`
`authentication.” Id. at 6-7.
`
`Canon’s arguments and evidence are proper in the context of a reply for the
`
`same reasons set forth in Canon v. Intellectual Ventures. There, the Board held it
`
`was proper for Canon Inc.’s reply to explain why the term “entering” was not
`
`limited to user action, as IV had argued in its patent owner response, and further to
`
`explain why the plain meaning of the term “entering” encompassed action by an
`
`electronic device. IPR2014-00631, Paper 50 at 47-50. Canon’s Reply in this
`
`proceeding did exactly the same thing. Reply at 3-7. Thus, it properly responded
`
`to arguments raised in Cellspin’s Patent Owner Response.
`
`Again, Canon could not have presented these arguments in its Petition
`
`because it could not have anticipated that Cellspin would advance such a narrow
`
`and unsupported construction. Id. And there is no prejudice to Cellspin in
`
`allowing Canon to present these arguments and evidence in its Reply because
`
`Cellspin had the opportunity to depose Dr. Madisetti, but chose not to. See Belden,
`
`805 F.3d at 1081.
`
`
`
`
`- 9 -
`
`
`
`

`

`IPR2019-00127
`Petitioner’s Opposition to Patent Owner’s Motion to Strike
`
`
`C.
`
`It Was Proper for Canon to Submit Evidence and Arguments to
`Explain Why the Claims Are Obvious Under Cellspin’s Narrow
`Construction of “Cryptographic Authentication”
`
`As Cellspin admits on page 9 of its Motion, Canon’s Petition argued that it
`
`would have been obvious to use Bluetooth as the wireless connection mechanism
`
`in the Hiroishi and Hollstrom references in order to take advantage of increased
`
`security that results from cryptographic authentication. Mot. at 9; Pet. at 24-25. In
`
`its Patent Owner Response, Cellspin argued that a person of ordinary skill in the art
`
`would not have had a motivation or rationale to use cryptographic authentication
`
`because it was only an optional feature of Bluetooth. POR at 34. Canon’s Reply
`
`demonstrated why Cellspin’s argument was incorrect, citing evidence to show that
`
`cryptographic authentication was a design choice and required feature for three of
`
`the four “association models” in Bluetooth version 2.1+EDR. Reply at 15-17.
`
`Canon also submitted cross-examination testimony from Cellspin’s expert
`
`identifying use cases where a person of ordinary skill in the art would have been
`
`motivated to use cryptographic authentication. Id.
`
`These arguments and evidence are directly responsive to Cellspin’s Patent
`
`Owner Response and simply provide further support for the theory set forth in
`
`Canon’s Petitioner. Thus, they are proper in the context of a reply.
`
`
`
`
`- 10 -
`
`
`
`

`

`IPR2019-00127
`Petitioner’s Opposition to Patent Owner’s Motion to Strike
`
`
`D.
`
`It Was Proper for Canon to Submit Evidence and Arguments
`Concerning Cryptographic Authentication in Security Mode 3 of
`the Bluetooth Specification
`
`Cellspin’s Patent Owner Response took the narrow position that a person of
`
`ordinary skill in the art at the time of the alleged invention would have considered
`
`only the most recent version of the Bluetooth specification in evaluating what was
`
`and was not obvious. POR at 34-35. In response, Canon explained that Cellspin’s
`
`argument did not make sense because devices using prior versions of the Bluetooth
`
`specification were widely in use at the time of the alleged invention and thus
`
`would have been highly relevant to persons of ordinary skill in the art. Reply at
`
`17. Canon then explained that one of these versions included “Security Mode 3,”
`
`in which cryptographic authentication was a mandatory feature. Id. This evidence
`
`provided further support for Canon’s argument that it would have been obvious to
`
`use cryptographic authentication because doing so was mandatory in Security
`
`Mode 3. Id.
`
`This argument and evidence is again directly responsive to Cellspin’s Patent
`
`Owner Response and therefore proper in the context of a reply. Cellspin does not
`
`provide any analysis or argument to demonstrate that the arguments and evidence
`
`are improper or outside the scope of a reply. See Motion at Sections III.D-E.
`
`
`
`
`- 11 -
`
`
`
`

`

`IPR2019-00127
`Petitioner’s Opposition to Patent Owner’s Motion to Strike
`
`
`E.
`
`It Was Proper for Canon to Submit Evidence and Arguments to
`Explain Why Cellspin’s Construction of “Graphical User
`Interface” Is Improper
`
`Cellspin’s Patent Owner Response presented a narrow construction for the
`
`term “graphical user interface” that attempted to exclude the use of a keypad for
`
`data entry into a graphical field. POR at 23. Cellspin then relied on this
`
`construction to argue that the Hiroishi and Ando references do not disclose
`
`graphical user interfaces. POR at 43, 48. Canon’s Reply explained why Cellspin’s
`
`construction was improper, and provided further explanation to support the theory
`
`set forth in its Petition, i.e., that a person of ordinary skill in the art would
`
`understand Hiroishi and Ando to disclose graphical user interfaces. Reply at 8, 21-
`
`23. Again, these arguments and the corresponding evidence are directly in
`
`response to narrow claim construction positions that Cellspin advanced in its
`
`Patent Owner Response. Id. Thus, they are proper in the context of a reply.
`
`F.
`
`It Was Proper for Canon to Explain Why Cellspin Relied on an
`Overly Rigid Obviousness Standard With Respect to Ando and
`Nozaki
`
`Cellspin’s Motion argues that Canon’s Reply presented a new theory as to
`
`why a person of ordinary skill in the art would have found it obvious to use Ando
`
`and Nozaki’s image deletion functionality in combination with Hiroishi and
`
`Hollstrom. Mot. at 13-14. This argument is demonstrably incorrect. Canon’s
`
`Petition set forth a detailed explanation of why a person of ordinary skill in the art
`
`
`
`
`- 12 -
`
`
`
`

`

`IPR2019-00127
`Petitioner’s Opposition to Patent Owner’s Motion to Strike
`
`
`would have been motivated to use the image deletion functionality of Ando and
`
`Nozaki. Pet. at 56-59. Canon’s Reply does not present any new theory of
`
`obviousness; it simply explains that the arguments set forth in Cellspin’s Patent
`
`Owner Response applied an overly rigid application of the KSR standard. Reply at
`
`25-26. Specifically, Cellspin had argued that a person of ordinary skill in the art
`
`would not have substituted the image deletion functionality of Ando and Nozaki
`
`for that of Hiroishi. POR at 49-50. This argument is contrary to KSR because a
`
`simple substitution of one element for another that achieve a predictable result is
`
`an example rationale set forth in the Supreme Court’s decision. See KSR v.
`
`Teleflex, 550 U.S. 398 (2007). It was entirely proper for Canon’s Reply to explain
`
`why the arguments set forth in Cellspin’s Patent Owner Response relied on an
`
`incorrect obviousness standard.
`
`G.
`
`It Was Proper for Canon to Respond to Cellspin’s Argument
`Concerning Takahashi
`
`Canon’s Petition relied on Takahashi for its teaching of uploading media
`
`files and associated user information to an internet website using HTTP. Pet. at
`
`31-32. Cellspin’s Patent Owner Response argued that Takahashi generates a
`
`different media file when it adds the user ID to the filename, and thus would not
`
`meet the claim requirements if combined with Hiroishi and Hollstrom. POR at 41.
`
`Dr. Madisetti’s Reply Declaration explained why this argument was incorrect from
`
`
`
`
`- 13 -
`
`
`
`

`

`IPR2019-00127
`Petitioner’s Opposition to Patent Owner’s Motion to Strike
`
`
`a technical standpoint because nothing in Takahashi suggests a different file is
`
`created, and a person of ordinary skill in the art would understand that the process
`
`does not generate a new file. Reply at 19. Dr. Madisetti further explained that a
`
`person of ordinary skill in the art reading the combined teachings of Takahashi and
`
`Hiroishi or Hollstrom would have found the claims obvious even under Cellspin’s
`
`theory because the teaching could be implemented without generating a new file.
`
`Id.; Ex. 1043 ¶¶ 16-17; see also In re Keller, 642 F.2d 413, 425 (CCPA 1981)
`
`(“The test for obviousness is not whether the features of a secondary reference may
`
`be bodily incorporated into the structure of the primary reference. . . . Rather, the
`
`test is what the combined teachings of those references would have suggested to
`
`those of ordinary skill in the art.”).
`
`Dr. Madisetti’s opinions are directly responsive to Cellspin’s Patent Owner
`
`Response, and in particular its argument that the claims would not have been
`
`obvious because Takahashi’s technique would have allegedly produced a different
`
`file. Reply at 19; Ex. 1043 ¶¶ 16-17. Accordingly, the opinions are proper in the
`
`context of a reply. And again, Cellspin had the opportunity to depose Dr.
`
`Madisetti concerning these opinions, but chose not to.
`
`
`
`
`
`
`
`
`- 14 -
`
`
`
`

`

`IPR2019-00127
`Petitioner’s Opposition to Patent Owner’s Motion to Strike
`
`
`IV. CONCLUSION
`
`For the foregoing reasons, Canon respectfully requests that the Board deny
`
`Cellspin’s Motion to Strike in its entirety.
`
`
`
`
`
`Date: January 10, 2020
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Jared W. Newton
`Jared Newton
`Reg. No. 65,818
`jarednewton@quinnemaneul.com
`Quinn Emanuel Urquhart & Sullivan, LLP
`1300 I Street NW, 9th Floor
`Washington, DC 20005
`Tel: (202) 538-8000
`Fax: (202) 538-8100
`
`- 15 -
`
`
`
`

`

`IPR2019-00127
`Petitioner’s Opposition to Patent Owner’s Motion to Strike
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on January 10, 2020, a copy of the foregoing document
`
`was served by filing this document through the PTAB’s E2E Filing System as well
`
`as delivery via electronic mail to the following:
`
`John J. Edmonds
`Email: pto-edmonds@ip-lit.com
`
`Stephen F. Schlather
`Email: sschlather@ip-lit.com
`
`René Vazquez
`rvazquez@ghiplaw.com
`
`
`
`Counsel for Patent Owner Cellspin Soft, Inc.
`
`
`
`
`Date: January 10, 2020
`
`
`
`
`
`
`
`
`
`
`
`/s/ Jared W. Newton
`Jared Newton
`Reg. No. 65,818
`jarednewton@quinnemaneul.com
`Quinn Emanuel Urquhart & Sullivan
`1300 I Street NW, 9th Floor
`Washington, DC 20005
`Tel: (202) 538-8000
`Fax: (202) 538-8100
`
`
`
`
`
`
`