UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`CANON U.S.A., INC.
`Petitioner
`
`vs.
`
`CELLSPIN SOFT, INC.,
`Patent Owner
`
`
`CASE: IPR2019-001271
`Patent No. 9,258,698
`
`
`PATENT OWNER CELLSPIN’S REQUEST FOR ORAL ARGUMENT
`
`
`
`1 GoPro, Inc., Garmin International, Inc. and Garmin USA, Inc. were joined
`as parties to this proceeding. Paper 27.
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`CANON U.S.A., INC.
`Petitioner
`
`vs.
`
`CELLSPIN SOFT, INC.,
`Patent Owner
`
`
`CASE: IPR2019-001271
`Patent No. 9,258,698
`
`
`PATENT OWNER CELLSPIN’S REQUEST FOR ORAL ARGUMENT
`
`
`
`1 GoPro, Inc., Garmin International, Inc. and Garmin USA, Inc. were joined
`as parties to this proceeding. Paper 27.
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.70 and the Board’s April 29, 2019, Scheduling Order (Paper 8),
`
`Patent Owner Cellspin Soft, Inc. respectfully requests oral argument, which is currently scheduled
`
`for January 28, 2020. Patent Owner requests that the oral hearing be held at the United States
`
`Patent and Trademark Office headquarters in Alexandria, Virginia. The parties conferred and each
`
`has requested 60 minutes for each side at the oral hearing in this IPR2019-00127 proceeding (i.e.,
`
`60 minutes for each of Patent Owner and Petitioner Canon (totaling 120 minutes) relative to issues
`
`in and specific to this IPR2019-00127). The foregoing does not include time to be devoted to oral
`
`argument in the separate IPR2019-00131 proceeding.
`
`Pursuant to 37 C.F.R. § 42.70, Patent Owner specifies the following issues to be argued:
`
`1.
`
`Whether Petitioner has carried its burden to prove that claims 1-22 of U.S. Patent
`
`No. 9,258,698 (the “’698 patent) are unpatentable over the combinations of Hiroishi, Takahashi,
`
`Nozaki, and Ando based upon the theories and grounds asserted in Petitioner’s Petition (Paper 1)
`
`for which the Board Instituted Inter Partes Review (Paper 7), which encompass each of the claim
`
`construction and patentability issues addressed in the Petitioner’s Petition, Patent Owner’s
`
`Response and Patent Owner’s Sur-Reply (but see non-waiver of objections noted in #12 below).
`
`The Board’s Institution Order (Paper 7) summarizes the asserted combinations as follows:
`
`Ground
`
`References
`
`Basis
`
`1
`2
`
`3
`
`4
`
`5
`
`6
`
`
`
`Hiroishi and Takahashi
`Hiroishi, Takahashi, and
`Ando
`Hiroishi, Takahashi, and
`Nozaki
`Hiroishi, Takahashi, Nozaki,
`and Ando
`Hollstrom and Takahashi
`
`Hollstrom, Takahashi, and
`Ando
`
`P a g e 2 | 6
`
`§ 103
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Claims
`Challenged
`1–20
`21, 22
`
`1–22
`
`21, 22
`
`1, 3–5, 7, 8, 10-
`13, 15–20
`2, 6, 9, 14, 21,
`22
`
`
`
`2. The claim construction issues noted in #1 include whether the following terms should
`
`be construed as Patent Owner has requested, including in the following summary chart:
`
`Term
`paired connection
`(including sub-
`definitions for
`pair/pairing/paired)
`cryptographically
`authenticated
`(including sub-
`definitions for
`cryptographic/
`cryptography and
`authenticate/
`authentication)
`graphical user
`interface
`
`Construction under BRI
`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
`verified as a legitimate transmission, user, or system including by
`use of encryption and decryption involving an algorithm
`
`an interface through which a user interacts with electronic devices
`such as computers, hand-held devices and other appliances. This
`interface uses icons, menus and other visual indicator (graphics)
`representations to display information and related user controls,
`unlike text-based interfaces, where data and commands are in text.
`GUI representations are manipulated by a pointing device such as a
`mouse, trackball, stylus, or a finger on a touch screen
`in addition to
`
`along with
`
`
`3.
`
`Whether the Board should grant or deny either side’s Motion to Strike and/or
`
`Exclude, including argument to be presented on either side’s motions and oppositions;
`
`4.
`
` Whether, irrespective of whether the Board grants Patent Owner’s Motion to Strike
`
`and/or Exclude, it should disregard theories, positions, arguments, and evidence untimely and
`
`improperly raised in and with Petitioner’s Reply in violation of 37 C.F.R. §42.23(b), including as
`
`set forth in Patent Owner’s Objections at Paper 25, in Patent Owner’s submission to be made on
`
`December 18th, and in Patent Owner’s to be filed Motions to Strike and/or Exclude.
`
`P a g e 3 | 6
`
`
`
`5.
`
`Whether granting Petitioner’s Motion to Strike and/or Exclude in whole or part
`
`would result in a violation of Patent Owner’s due process rights, including as noted in Patent
`
`Owner’s submission at Paper .
`
`6.
`
`To the extent that the Board does not issue a ruling on pending Motions to
`
`Strike/Exclude, Cellspin specifies argument on all issues raised in its Response and Sur-Reply, as
`
`well as in the Exhibits thereto, including the Response and Sur-Reply Declarations of Dr. Michael
`
`Foley at Exs. 2009 and 2026 (but see non-waiver of objections noted in #12 below).
`
`7.
`
`Whether this proceeding and/or the decisions arising therefrom constitute an
`
`unconstitutional taking and a due process violation (on account of retroactive application of the
`
`IPR statute) and/or a violation of the Constitution’s appointments clause, including as already
`
`noted and briefed in Patent Owner’s Response and Sur-Reply.
`
`8.
`
`9.
`
`Argument on all issues specified by Petitioner and/or the Board for argument.
`
`Rebuttal to Petitioner’s presentation on all matters;
`
`10.
`
`Any other issues raised in other motions or papers filed and/or to be filed in this
`
`proceeding, including any Motions to Strike/Exclude and/or Oppositions to Motions to
`
`Strike/Exclude; and/or objections to demonstrative exhibits, and/or any other motion or paper filed
`
`by any party before oral argument.
`
`11.
`
`Any other outstanding motions and pleadings, and other issues upon which the
`
`Board seeks clarification and/or that the Board deems necessary for issuing a Final Written
`
`Decision.
`
`12.
`
`The issues noted above are stated without prejudice to Patent Owner’s objections
`
`to Patent Owner’s Objections at Paper 25, Patent Owner’s upcoming submission on December
`
`18th, and Patent Owner’s to be filed Motions to Strike and/or Exclude. Specifically, to the extent
`
`that the Board has, will or may strike or exclude theories, positions, arguments, and evidence
`
`P a g e 4 | 6
`
`
`
`untimely and improperly raised in and with Petitioner’s Reply in violation of 37 C.F.R. §42.23(b),
`
`Patent Owner’s present request to argue issues addressed in and with its Sur-Reply does not
`
`constitute a waiver of objections to issues improperly or un timely being asserted in and with
`
`Petitioner’s Reply, or a waiver of such issues improper and/or untimely issues improperly being
`
`considered, and/or the basis of any ruling of unpatentability, by the Board.
`
`Patent Owner requests the ability to use and provision of audio-visual equipment to display
`
`possible demonstratives and exhibits, including an ELMO, projector, and screen. Patent Owner
`
`requests that five spaces be reserved at the oral hearing to accommodate its counsel and corporate
`
`representative. Patent Owner requests that its counsel be allowed to use computers at counsel’s
`
`table, including for consultation and running audio visual presentations.
`
` No fees are required for filing this request; however, the Commissioner is authorized to
`
`charge Deposit Account No. 506574.
`
` If the Board has any questions, comments, or suggestions, the undersigned requests a
`
`telephone conference regarding same.
`
`
`
`Dated: December 17, 2019
`
`
`
`Respectfully submitted,
`
`/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: jedmonds@ip-lit.com
`pto-edmonds@ip-lit.com
`
`
`Stephen F. Schlather, Reg. No. 45,081
`EDMONDS & SCHLATHER, PLLC
`2501 Saltus Street
`Houston, TX 77003
`P: 713-234-0044
`F: 713-224-6651
`E: sschlather@ip-lit.com
`P a g e 5 | 6
`
`
`
`
`
`
`
`
`
`Certificate of Service
`
`
`I hereby certify that this PATENT OWNER’S AMENDED EXHIBIT LIST is being served on
`December 17, 2019 by electronic mail and PTAB ECF to the following:
`
`
`jarednewton@quinnemaneul.com
`Jennifer.Bailey@eriseip.com
`Adam.Seitz@eriseip.com
`PTAB@eriseip.com
`karinehk@rimonlaw.com
`
`
`Dated: December 17, 2019
`
`
`
`
`
`/s/ John J. Edmonds
`John J. Edmonds
`
`Counsel for Owner,
`Cellspin Soft, Inc.
`
`
`
`P a g e 6 | 6
`
`
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