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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GOPRO, INC., GARMIN INTERNATIONAL, INC., AND GARMIN USA, INC.
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`Petitioners,
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`v.
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`CELLSPIN SOFT, INC.
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`Patent Owner.
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`U.S. Patent No. 9,258,698
`Inter Partes Review No. IPR2019-01107
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`REPLY TO MOTION FOR JOINDER
`TO RELATED INTER PARTES REVIEW IPR2019-00127
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`Canon Exhibit 1035, Page 1
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` IPR2019-01107
` Reply to Motion for Joinder
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`INTRODUCTION
`The sole basis for Canon U.S.A., Inc.’s opposition to the Motion for Joinder
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`is the different claim constructions standards due to the timing of filing Canon’s
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`Petition for IPR (IPR2019-00127 or the “Canon IPR”) versus present Petition.
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`Canon hypothesizes the Canon IPR may be impacted by the different claim
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`construction standards. Paper 13, 5-6. Importantly, Canon provides no actual
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`evidence regarding the different claim construction standards will affect the Canon
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`IPR nor does Canon identify any tangible prejudice to Canon. Because the Board
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`has refused to preclude joinder in similar situations, and because Canon’s alleged
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`prejudice is hypothetical at best, joinder is appropriate.
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` THE DIFFERENT CLAIM CONSTRUCTION STANDARDS WILL
`HAVE NO MATERIAL IMPACT ON THE CANON IPR
` Canon Speculates the Different Standards Will Impact the Canon
`IPR Without Identifying Actual Harm
`In the GoPro/Garmin IPR Petition, Petitioners GoPro, Inc., Garmin
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`International, Inc., and Garmin USA, Inc., noted the different claim construction
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`standards applicable to the Canon IPR (filed before November 13, 2018) and the
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`present IPR (filed after November 13, 2018). Paper 1, 18. GoPro/Garmin stated:
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`“Petitioners submit that any proposed constructions are at least included within the
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`scope of either standard, and as such, the applicable standard does not affect any
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`proposed claim constructions.” Id.; see also Paper 4, Motion for Joinder, at 4
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`1
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`Canon Exhibit 1035, Page 2
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`(“Regarding the claim construction standards (i.e., BRI vs. Phillips), any proposed
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` IPR2019-01107
` Reply to Motion for Joinder
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`constructions in the Canon IPR are at least included within the scope of either
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`standard. Therefore, the difference in standards should not have any material effect
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`on whether joinder is appropriate.”)
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`Canon complains that due to the different standards “the issues in this
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`proceeding may have to be decided under both standards ….” Paper 13, 1 (emphasis
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`added). Canon does not identify any claim term that would have different
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`constructions under the different standards. Nor does Canon identify any actual
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`harm that would result from the different standards. Canon merely speculates that
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`the different claim construction standards may complicate the proceedings. Id.; see
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`also id., 2 (referring to the “possibility” of Patent Owner Cellspin presenting new
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`arguments under the Phillips standard). Canon’s own argument that the issues in the
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`proceeding may have to be decided under both standards make clear the hypothetical
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`nature of Canon’s complaint. Canon cannot point to any claim term that would be
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`impacted by the different construction standards, let alone how any alleged
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`difference would result in different unpatentability analyses.
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`Under similar facts, the Board previously found joinder appropriate.
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`Priceline.com LLC and Booking.com B.V. v. DDR Holdings, LLC, IPR2019-0040,
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`Paper 9 at 8-9, n. 3 (P.T.A.B. Jun. 10, 2019). In Priceline, the original petition was
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`filed under the BRI standard, whereas the joinder Petition was filed under the
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`2
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`Canon Exhibit 1035, Page 3
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`Phillips standard. Id. Joinder petitioner submitted the different claim construction
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` IPR2019-01107
` Reply to Motion for Joinder
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`standards would not change the outcome of the original IPR. Id. The Board agreed
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`and instituted the joiner IPR and joined with the original related IPR. Id.
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`The same analysis applies in the present IPR. Any proposed constructions are
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`at least included within the scope of either standard. Paper 4, 4. Therefore, the
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`different claim construction standards will have no material impact on the IPR.
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`Joinder is also appropriate because Canon does not identify any claim
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`construction that would be impacted by the different standards. In the Canon IPR,
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`Canon did not propose any claim constructions in the Petition. Canon U.S.A., Inc. v.
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`Cellspin Soft, Inc., IPR2019-00127, Paper 1, 17-18 (P.T.A.B. Oct. 30, 2018). In the
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`Preliminary Response, Patent Owner Cellspin construed two terms, “paired” and
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`“cryptographically authenticating.” Id., Paper 6, 13-16. In the Institution Decision,
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`the Board noted Canon did not expressly construe any claim, stating “[w]e proceed
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`on the understanding that Petitioner [Canon] did not identify any dispute regarding
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`claim construction and relies on the plain and ordinary meaning of the claim terms
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`to a person of ordinary skill in the art.” Id., Paper 7, 10. The Board determined it did
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`not need to construe “paired” for purposes of institution. Id. For the term
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`“cryptographically authenticating,” the Board provided a construction. Id., 12.
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`At this juncture in the Canon IPR, Canon, Cellspin, and the Board have all
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`had an opportunity to weigh in on any desired claim constructions. Even for the
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`3
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`Canon Exhibit 1035, Page 4
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`single claim construction presented by the Board (i.e., “cryptographically
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` IPR2019-01107
` Reply to Motion for Joinder
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`authenticating”), Canon does not indicate in its Opposition that the construction
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`would be different under Phillips. Canon merely speculates about “the possibility”
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`that Cellspin will present a new construction. Paper 13, 6. Although this is doubtful
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`given the constructions proposed to-date, GoPro/Garmin reiterate that any proposed
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`or adopted constructions in the Canon IPR are at least included within the scope of
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`either standard. Therefore, application of the Phillips standard does not materially
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`impact the Canon IPR.
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` Canon Proposes a Per Se Rule Against Joinder if Different Claim
`Construction Standards Apply
`Canon is advocating for a per se rule that for any IPR filed after November
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`13, 2018, and seeking joinder with an IPR filed before such date, joinder should
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`automatically be denied due to the different construction standards. See Paper 13, 6-
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`7. This is inconsistent with the Board’s joinder practice since the claim construction
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`rule change. Based on a search of joinder motions filed since the November 13, 2018
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`rule change (using Docket Navigator), counsel for GoPro/Garmin identified 36
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`joinder motions, with 25 of the motions being granted or partially granted. This alone
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`shows that the Board routinely grants joinder even though the joinder IPR is filed
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`under a different claim construction standard.
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`4
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`Canon Exhibit 1035, Page 5
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` IPR2019-01107
` Reply to Motion for Joinder
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`Reproduced from Docket Navigator Search Performed July 9, 2019
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`Taken to its logical conclusion, Canon is asking the Board to apply a per se
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`rule to deny joinder based on the possibility of complications to the original IPR
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`where different standards apply. Canon makes this request even though it has not
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`identified any actual issue that would delay or otherwise complicate the Canon IPR.
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`Therefore, joinder is appropriate.
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`5
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`Canon Exhibit 1035, Page 6
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` IPR2019-01107
` Reply to Motion for Joinder
` Canon Is the Only Party Opposing Joinder
`Patent Owner Cellspin did not oppose joinder. Paper 11. It is reasonable to
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`infer Cellspin does not see a difference in the claim construction standards.
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`Presumably, Cellspin would have raised the issue of the different standards if
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`Cellspin believed the different standards materially affected the Canon IPR.
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`Therefore, it is highly unlikely Cellspin will present new claim construction
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`arguments under the Phillips standard, as hypothesized by Canon. Paper 13, 2, 8-9.
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`Yet further, the ’698 Patent is undergoing a second IPR, IPR2019-00131, filed
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`by Petitioner, Panasonic Corp. of North America. GoPro/Garmin have filed a motion
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`for joinder to the Panasonic IPR. GoPro, Inc. v. Cellspin Soft, Inc., IPR2019-01108,
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`Paper 4 (P.T.A.B. May 24, 2019). Neither Petitioner Panasonic nor Patent Owner
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`Cellspin opposed GoPro/Garmin’s motion for joinder. Id., 1. Because the claims
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`must be construed consistently between the Canon and Panasonic IPRs, and further
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`because neither Cellspin nor Panasonic has indicated that different claim
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`construction standards would possibly materially affect the Panasonic IPR, there is
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`no evidence of any harm or complications to either the Canon or Panasonic IPRs due
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`to the different standards.
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` GOPRO/GARMIN’S USE OF A DIFFERENT DECLARANT WILL
`HAVE MINIMAL IMPACT ON THE CANON IPR
`To the extent GoPro/Garmin were forced to use a different Declarant in the
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`present Petition due to Canon refusing to allow GoPro/Garmin to retain Canon’s
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`6
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`Canon Exhibit 1035, Page 7
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`Declarant, Dr. Vijay Madisetti, the difference in the declarants will not complicate
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` IPR2019-01107
` Reply to Motion for Joinder
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`the Canon IPR, as asserted by Canon. Paper 13, 6, n. 3. In the Motion for Joinder,
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`GoPro/Garmin noted their Declarant, Mr. Christensen, had reviewed Dr. Madisetti’s
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`opinion and that Mr. Christensen was “in agreement with Dr. Madisetti’s opinions
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`and adopts them as his own.” Paper 4, 5, citing Ex. 1033, Declaration of Mr. Gerald
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`Christensen, ¶ 15. GoPro/Garmin further stated they are willing to rely on Dr.
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`Madisetti’s opinions, should Canon permit it. Id. GoPro/Garmin even went so far as
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`to agree to withdraw Mr. Christensen’s declaration and solely rely on Dr. Madisetti’s
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`declaration, “should the Board determine Petitioners’ reliance on Mr. Christensen as
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`an expert would adversely affect completion of the Canon IPR according to the
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`Scheduling Order in the Canon IPR and within the one-year statutory timeframe.”
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`Id., 5-6. GoPro/Garmin made “these concessions to ensure no, or negligible, impact
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`on the schedule to joinder.” Id., 6. In a similar situation in Priceline, the Board found
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`that “joinder with the related IPR would have minimal impact.” Priceline, IPR2019-
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`00440, Paper 9, 8-9.
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`Because Mr. Christensen adopts Dr. Madisetti’s opinions as his own and
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`presents no other substantive opinions beyond those of Dr. Madisetti, GoPro/Garmin
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`submit that joinder using Mr. Christensen will not affect the claim construction or
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`otherwise complicate the Canon IPR. In short, if this is an issue, it is a problem of
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`Canon’s own making that it can easily solve by permitted GoPro/Garmin to retain
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`7
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`Canon Exhibit 1035, Page 8
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`its expert.
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` IPR2019-01107
` Reply to Motion for Joinder
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` CONCLUSION
`Because the different claim construction standards will have no material
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`impact on the timing of the Canon IPR or otherwise complicate the Canon IPR,
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`joinder is appropriate and should be granted.
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`Dated: July 29, 2019
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`Respectfully submitted,
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`
` / David T. Xue /
`David T. Xue, Reg. No. 54,554
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`Lead Counsel for Petitioner,
`GOPRO, INC.
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`
` /Jennifer C. Bailey/
`Jennifer C. Bailey, Reg. No. 52,583
`Adam P. Seitz, Reg. No. 52,206
`ERISE IP, P.A.
`7015 College Boulevard, Suite 700
`Overland Park, Kansas 66211
`Telephone: (913) 777-5600
`Facsimile: (913) 777-5601
`Jennifer.Bailey@eriseip.com
`Adam.Seitz@eriseip.com
`PTAB@eriseip.com
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`Attorneys for Petitioners,
`GARMIN INTERNATIONAL, INC.
`AND GARMIN USA, INC.
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`8
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`Canon Exhibit 1035, Page 9
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` IPR2019-01107
` Reply to Motion for Joinder
`CERTIFICATE OF SERVICE
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` hereby certify that on July 29, 2019, a copy of the REPLY TO MOTION
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`FOR JOINDER TO RELATED INTER PARTES REVIEW IPR2019-00127,
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`was served by filing this document through the PTAB’s E2E Filing System as well
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`as delivering a copy via electronic mail upon the following:
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`Counsel for Patent Owner, Cellspin Soft, Inc.
`John J. Edmonds, Reg. No. 56,184
`Edmonds & Schlather, PLLC
`355 South Grand Avenue, Suite 2450
`Los Angeles, CA 90071
`pto-edmonds@ip-lit.com
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`Stephen F. Schlather, Reg. No. 45,081
`Edmonds & Schlather, PLLC
`1616 South Voss Road, Suite 125
`Houston, Texas 77057
`sschlather@ip-lit.com
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`Dated: July 29, 2019
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`/ David T. Xue /
`David T. Xue
` Reg. No. 54,554
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`9
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`Canon Exhibit 1035, Page 10
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