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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
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`CANON U.S.A., INC.
`Petitioner
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`v.
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`CELLSPIN SOFT, INC.
`Patent Owner
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`___________________
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`U.S. Patent No. 9,258,698
`Inter Partes Review No. 2019-00127
`___________________
`
`
`CANON’S SUR-REPLY IN SUPPORT OF
`ITS OPPOSITION TO
`GOPRO AND GARMIN’S MOTION FOR JOINDER
`FILED IN IPR2019-01107
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`As Authorized by the Board via Email Dated August 6, 2019
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`IPR2019-00127
`Canon’s Sur-Reply
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`
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`As authorized by the Board, see Ex. 1034, Canon respectfully submits this
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`Sur-Reply to respond to two arguments raised in GoPro/Garmin’s Reply in support
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`of their Motion for Joinder.
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`First, GoPro/Garmin argue that the Board granted joinder under “similar
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`facts” in Priceline.com LLC & Booking.com B.V. v. DDR Holdings LLC, IPR2019-
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`00440. Reply at 2. This argument is incorrect. In Priceline, the original petitioner
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`did not oppose joinder. Priceline, Paper 4 at 2-3 (Dec. 14, 2018). The Board
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`considered only whether the Phillips standard would adversely impact the patent
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`owner and determined it would not. Id., Paper 9 at 9 n.3. In the present case,
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`Canon does oppose joinder and has identified specific reasons why different claim
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`construction standards would lead to increased complexity, uncertainty, and
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`prejudice to Canon. Opp. at 5-11. Although GoPro/Garmin argue that new claim
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`construction issues under the Phillips standard are only a possibility, they do not
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`dispute the complexity, uncertainty, and prejudice that would result if such issues
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`arise.1 Reply at 1-4. Nor do they propose any mechanism for dealing with such
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`1 Patent Owner has not represented that it will refrain from raising new claim
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`constructions in its preliminary response to GoPro/Garmin’s petition, and in any
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`event, new constructions could arise later in the proceeding. See 77 Fed. Reg.
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`48680, 48700 (Comment 40 and Response to same).
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`- 1 -
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`IPR2019-00127
`Canon’s Sur-Reply
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`issues, in order to maintain the current briefing and procedural schedule. Id. Thus,
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`they have failed to meet their burden to show joinder is appropriate. Opp. at 5-8.
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`Second, Canon is not advocating for a “per se rule” against joinder when
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`there are different claim construction standards at issue. Reply at 4-5. Canon is
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`asking the Board to deny joinder based on the facts of this case, where there is a
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`legitimate risk of joinder complicating the proceeding, and where GoPro/Garmin
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`created that risk by failing to comply with the one-year bar date under 35 U.S.C.
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`§ 315(b). Opp. at 10-11. Canon had no control over GoPro/Garmin’s decision to
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`file after the one-year bar date, and Canon should not have to suffer the prejudice
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`that could result from that decision. GoPro/Garmin’s Motion and Reply do not set
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`forth an explanation to justify the delay. Nor do they make any effort to show that
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`the proceedings in the graph on page five of the Reply involved the same delay by
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`the party seeking joinder (or even that the proceedings involved different claim
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`construction standards). Reply at 5. Accordingly, the Board should reject
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`GoPro/Garmin’s “per se rule” argument.2
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`2 Even if Canon were advocating for a per se rule, the rule would apply only in the
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`narrow circumstances where the first petition was filed before November 13, 2018,
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`and the second petition was filed on or after that date. Moreover, the rule would
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`have no applicability after June 12, 2019, the deadline to join a BRI petition.
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`- 2 -
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`Date: August 13, 2019
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`IPR2019-00127
`Canon’s Sur-Reply
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`Respectfully submitted,
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`/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
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`- 3 -
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`CERTIFICATE OF SERVICE
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`I hereby certify that on August 13, 2019, a copy of the foregoing sur-reply
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`was served by filing this document through the PTAB’s E2E Filing System as well
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`as delivery a copy via electronic mail to the following:
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`John J. Edmonds
`Reg. No. 56,184
`pto-edmonds@ip-lit.com
`Counsel for Patent Owner Cellspin Soft, Inc.
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`David T. Xue
`Reg. No. 54,554
`david.xue@rimonlaw.com
`Counsel for Petitioner GoPro, Inc. in IPR2019-01107
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`Jennifer C. Bailey, Reg. No. 52,583
`Adam P. Seitz, Reg. No. 52,206
`Jennifer.Bailey@eriseip.com
`Adam.Seitz@eriseip.com
`PTAB@eriseip.com
`Counsel for Petitioners Garmin Int’l, Inc. and Garmin USA, Inc. in IPR2019-
`01107
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`Date: August 13, 2019
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`
`/s/ Jared W. Newton
`Jared Newton
`Reg. No. 65,818
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