Paper 14
`
`Trials@uspto.gov
`Entered: June 12, 2019
`
`571-272-7822
`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 IPR2019-00127 (Patent 9,258,698 B2)
`______________
`
`GOPRO, INC., GARMIN INTERNATIONAL, INC., AND GARMIN USA,
`INC.,
`Petitioners,
`
`v.
`
`CELLSPIN SOFT, INC.,
`Patent Owner.
`_____________
`
`Case IPR2019-01107 (Patent 9,258,698 B2)
`
`
`
`
`
`Before GREGG I. ANDERSON, DANIEL J. GALLIGAN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding-37 C.F.R. § 42.5
`
`
`
`Trials@uspto.gov
`Entered: June 12, 2019
`
`571-272-7822
`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 IPR2019-00127 (Patent 9,258,698 B2)
`______________
`
`GOPRO, INC., GARMIN INTERNATIONAL, INC., AND GARMIN USA,
`INC.,
`Petitioners,
`
`v.
`
`CELLSPIN SOFT, INC.,
`Patent Owner.
`_____________
`
`Case IPR2019-01107 (Patent 9,258,698 B2)
`
`
`
`
`
`Before GREGG I. ANDERSON, DANIEL J. GALLIGAN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding-37 C.F.R. § 42.5
`
`
`
`Case IPR2019-00127 (Patent 9,258,698)
`Case IPR2019-01107 (Patent 9,258,698)
`
`
`INTRODUCTION
`A telephone conference was held on June 11, 2019, regarding a
`“Motion for Joinder Under 35 U.S.C. § 315(c) and 37 C.F.R. §§ 42.22
`and 42.122(b) to Related Inter Partes Review IPR2019-00127” (“Motion
`for Joinder”) filed by Petitioners GoPro, Inc. (“GoPro”), Garmin Int’l,
`Inc. and Garmin USA, Inc. (collectively “Garmin”) in IPR2019-01107
`(“’1107 IPR”). ’1107 IPR, Paper 4. Counsel for Petitioner Canon
`U.S.A., Inc. (“Canon”) in IPR2019-00127 (“’127 IPR”), counsel for
`GoPro, Inc. and Garmin in the ’1107 IPR, counsel for Cellspin Soft, Inc.
`(“Patent Owner”) in both inter partes review proceedings, and Judges
`Anderson, Galligan, and Margolies participated in the call.
`The call was requested by Canon for the purpose of discussing a
`schedule for briefing the Motion for Joinder. Canon and Patent Owner
`both oppose joinder.
`A second question regarding pro hac vice admission of Karineh
`Khachatourian as back-up counsel for GoPro was also raised. Patent
`Owner stated its intention to oppose pro hac vice admission of Ms.
`Khachatourian.
`
`DISCUSSION
`The ’1107 IPR is at an early stage. Patent Owner’s Preliminary
`Response is currently due September 11, 2019. Although the Petition in
`the ’1107 IPR was represented as all but identical to that in the ’127 IPR,
`Patent Owner argued there may be different issues and it might file a
`different Preliminary Response than it filed in the ’127 IPR. At this time,
`there is no reason to expedite briefing on the Motion for Joinder.
`The parties opposing the Motion for Joinder, Canon and Patent
`
`2
`
`
`
`Case IPR2019-00127 (Patent 9,258,698)
`Case IPR2019-01107 (Patent 9,258,698)
`
`Owner, have one month from service of the Motion for Joinder or until
`June 28, 2019, to file their oppositions. 37 C.F.R. § 42.25(a)(1). Any
`reply by GoPro and Garmin is due one month after filing the opposition
`or until July 29, 2019, whichever is later. 37 C.F.R. § 42.25(a)(2).
`Because Canon is not a party to the ’1107 IPR, Canon shall file its
`opposition in the ’127 IPR and send an email to Trials@uspto.gov for
`entry of the opposition in the ’1107 IPR. Canon shall also file a copy of
`the Motion for Joinder as an exhibit of Petitioner in the ’127 IPR.
`Concerning GoPro’s proposed motion for pro hac vice admission
`of Ms. Khachatourian in the ’1107 IPR, GoPro will file the motion
`following the time set forth in Unified Patents, Inc. v. Parallel Iron LLC,
`Case IPR2013-00639 of no sooner than twenty one (21) days after
`service of the Petition. Patent Owner shall file any opposition by July
`12, 2019, or one week after filing of the motion, whichever is later.
`ORDER
`
`It is
`ORDERED that Canon shall file the Motion for Joinder as an exhibit
`of Petitioner in the ’127 IPR by no later than June 28, 2019;
`FURTHER ORDERED that Canon and Patent Owner are each
`authorized to file an opposition to the Motion for Joinder by no later than
`June 28, 2019;
`FURTHER ORDERED that GoPro and Garmin are authorized to file
`a single reply in support of the Motion for Joinder by no later than July 29,
`2019;
`
`FURTHER ORDERED that no sur-reply is authorized at this time;
`FURTHER ORDERED that the opposition and reply to the Motion
`
`3
`
`
`
`Case IPR2019-00127 (Patent 9,258,698)
`Case IPR2019-01107 (Patent 9,258,698)
`
`for Joinder are subject to the page limits set forth in 37 C.F.R. § 42.24;
`FURTHER ORDERED that the parties in the ’1107 IPR shall meet
`and confer regarding whether Patent Owner is amenable to accelerating the
`deadline for its Preliminary Response and shall send a joint email to
`Trials@uspto.gov by no later than July 10 reporting on the results of the
`meet and confer;
`FURTHER ORDERED that GoPro may file its motion for pro hac
`vice of Karineh Khachatourian on or after June 18, 2019, and Patent Owner
`shall file any opposition by July 12, 2019, or one week after filing of the
`motion, whichever is later; and
`FURTHER ORDERED that the motion for pro hac vice is limited to
`eight (8) pages, exclusive of the declaration of Ms. Khachatourian, and the
`opposition is also limited to eight (8) pages.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`Case IPR2019-00127 (Patent 9,258,698)
`Case IPR2019-01107 (Patent 9,258,698)
`
`PETITIONER in ’127 IPR:
`
`Jared Newton
`QUINN EMANUEL URQUHART & SULLIVAN
`jarednewton@quinnemanuel.com
`
`
`PETITIONERS in ’1107 IPR:
`
`David Xue
`RIMÔN LAW
`David.xue@rimonlaw.com
`
`Jennifer Bailey
`Adam Seitz
`ERISE IP, P.A.
`Jennifer.bailey@eriseip.com
`Adam.seitz@eriseip.com
`
`
`PATENT OWNER:
`John Edmonds
`Eric Carr
`Stephen Schlather
`COLLINS EDMONDS & SCHLATHER, PLLC
`Pto-edmonds@ip-lit.com
`ecarr@ip-lit.com
`sschlather@ip-lit.com
`
`
`
`
`
`
`5
`
`
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