UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CANON U.S.A., INC.
`Petitioner
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`vs.
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`CELLSPIN SOFT, INC.,
`Patent Owner
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`CASE: IPR2019-001271
`Patent No. 9,258,698
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`PATENT OWNER CELLSPIN’S CORRECTED2 NOTICE OF BASIS FOR RELIEF
`REQUESTED UNDER 37 C.F.R. § 42.21 PURSUANT TO THE
`DECEMBER 13, 2019 ORDER
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`1 GoPro, Inc., Garmin International, Inc. and Garmin USA, Inc. were joined as parties to this proceeding.
`Paper 27.
`2 This filing corrects the certificate of service from Cellspin’s originally filed Notice of Basis for Relief
`at Paper 34.
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`I.
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`Specific Relief Requested in Motion to Strike
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`IPR2019-0027
`U.S. Pat. No. 9,258,698
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`Cellspin requests authorization to file a motion to strike Canon’s Reply in its entirety and its
`accompanying Exhibits 1036-1045.2 In the alternative, the motion will request that the Board strike
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`those ten Exhibits along with any arguments in the Reply based on those Exhibits. In the alternative,
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`the motion will request that the Board strike those ten exhibits and accord no weight to arguments in
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`the Reply based on said Exhibits. In the alternative, the Motion will request the Board to strike, or
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`alternatively give no weight to, at a minimum the matters listed and set forth in detail in Cellspin’s
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`previously filed Objections of October 28, 2019, at Paper 25.
`II.
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`Bases for the Requested Relief
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`The Reply and the ten exhibits: (1) violate the PTAB’s Consolidated Trial Practice Guide,
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`November 2019’s (“Consolidated Guide”) proscription against submitting new evidence with a reply;
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`and (2) thus, unfairly prejudice Cellspin.
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`Cellspin appreciates that the Board generally disfavors motions to strike, including because
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`striking matters may inhibit their inclusion in the public and appellate records, and because the Board
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`has the ability to sort through what is improperly new in a reply filing without needing to address a
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`motion to strike. See, e.g., Silicon Laboratories, Inc. v. Cresta Technology Corp., IPR2015-00615,
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`00626, Paper 26 (PTAB Feb. 29, 2016) (Denying authorization for Motion to Strike and instead
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`permitting submission of a list of portions in Reply that were improperly new). To this end, the Board’s
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`Practice Guide states that:
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`In most cases, the Board is capable of identifying new issues or belatedly presented
`evidence when weighing the evidence at the close of trial, and disregarding any new issues
`or belatedly presented evidence that exceeds the proper scope of reply or sur-reply. As
`such, striking the entirety or a portion of a party’s brief is an exceptional remedy that the
`Board expects will be granted rarely. Thus, in most cases, the Board is capable of
`identifying new issues or belatedly presented evidence when weighing the evidence at the
`close of trial, and disregarding any new issues or belatedly presented evidence that exceeds
`the proper scope of reply or sur-reply.
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`1
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`Consolidated Guide, p. 80.
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`IPR2019-0027
`U.S. Pat. No. 9,258,698
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`Nonetheless, nine days after Cellspin filed its Sur-Reply, Canon saw fit to request leave for a
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`motion to strike what it alleges to be improper new matters within and cited by Cellspin’s Sur-Reply. 3
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`Setting aside the lack of merit in whole or part of such a motion by Canon, should the Board entertain
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`Canon’s motion, then it should also grant Cellspin leave for a motion to strike indisputably, improperly
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`new matters within and cited by Cellspin’s Sur-Reply. See Intelligent Bio-Systems, Inc. v. Illumina
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`Cambridge Ltd., 821 F.3d 1359, 1369-70 (Fed. Cir. 2016) (Board did not abuse its discretion in refusing
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`to consider reply brief arguments advocating a “new theory” of unpatentability under 37 C.F.R.
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`§42.23(b)); Apple Inc. v. e-Watch, Inc., Case IPR2015-00412, slip op. at 44 (Paper 50) (PTAB May 6,
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`2016) (“‘Respond,’ in the context of 37 C.F.R. §42.23(b), does not mean embark in a new direction
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`with a new approach as compared to the position originally taken in the Petition. Accepting such
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`belatedly presented new arguments would be unjust to the Patent Owner and we decline to do so.”). As
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`noted in the Board’s Practice Guide,
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`Petitioner may not submit new evidence or argument in reply that it could have presented
`earlier, e.g. to make out a prima facie case of unpatentability. A party also may submit
`rebuttal evidence in support of its reply. See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064,
`1077–78 (Fed. Cir. 2015). If a party submits a new expert declaration with its reply, the
`opposing party may … move to exclude the declaration. Id. at 1081−82.4
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`Consolidated Guide, p. 73. Canon’s Reply constitutes a clear and egregious violation of this rule,
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`because everything, or at a minimum substantially everything of substance or consequence, in the Reply
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`or cited by the Reply constitutes new, non-rebuttal matters in reply that Canon could have presented
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`earlier, e.g. to make out a prima facie case of unpatentability. Thus, everything of substance in and cited
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`3 The Practice Guide’s statement that ordinarily leave for motions to strike should be requested within
`seven days of the offending paper does not constitute an absolute seven-day deadline for motions to
`strike. If it did, then the Board would presumably refuse leave for both Canon and Cellspin, both of
`which requested leave after such a seven-day window had passed.
`4 The Board’s deadline for filing motions to exclude, i.e., January 9, 2020, has not passed. Paper 12, p.
`9.
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`2
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`IPR2019-0027
`U.S. Pat. No. 9,258,698
`by Cellspin’s Sur-reply was submitted in rebuttal to Canon’s improper Reply and improper Reply
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`evidence.
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`At a minimum, due process and fundamental fairness would require striking all, or at least
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`substantially all, of Canon’s Reply and the evidences it relied upon, including the wholly improper
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`Madisetti Declaration at Ex. 1043. Alternatively, at a minimum, due process and fundamental fairness
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`would require denying any motion to strike brought by Canon, including for the foregoing reasons. Thus,
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`the motions to strike sought to be filed by Canon and Cellspin are intertwined, including logically and
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`factually, and the Board should consider both sides Motions to Strike if it considers either of them.
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`It would constitute a grave injustice if the Board does not strike or, at a minimum, disregard the
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`new theories asserted in and with Canon’s Reply, which include improperly new obviousness theories,
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`which are beyond dispute new and outside the scope of Canon’s Petition and Cellspin’s Response,
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`including at least the following: (1) that paired wireless connections are obvious in view of Bluetooth
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`and/or the Bluetooth Specification for various reasons, including encouragement, design choice,
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`expectedness, routineness and/or due to predictable results; (2) that it would have been obvious to pair
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`and/or that a POSITA would have been motivated to pair the Hiroishi and/or Hollstrom wireless
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`connections for various reasons, including encouragement, design choice, expectedness, routineness
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`and/or due to predictable results; (3) new theories, including obviousness theories, based in whole or
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`part upon the Bluetooth Basic Imaging Profile (BIP); (4) that pared wireless connection should now be
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`construed to require an “association” instead of merely requiring two-way communications; (5) that
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`Hiroishi meets Canon’s new “association” theory of pairing; (6) that fields which receive text inputs via
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`a keypad fall within the scope of graphical user interface; (7) that cryptographic authentication was
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`obvious based upon matters and language set forth in the Bluetooth standard or other new Exhibits relied
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`upon by Canon, for various reasons, including encouragement, design choice, expectedness, routineness
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`and/or due to predictable results; (8) that if a POTISA wanted to establish a connection, he or she would
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`3
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`IPR2019-0027
`U.S. Pat. No. 9,258,698
`necessarily use or “have to use” cryptographic authentication, including based upon analysis of contents
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`of the Bluetooth Standard or other new Exhibits relied upon by Canon; (9) that cryptographic
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`authentication was a “mandatory” feature, including under Security Mode 3 of the Bluetooth Standard;
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`(10) that cryptographic authentication was a feature of Bluetooth association models and/or obviousness
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`theories based thereon; (11) new theories for combining and motivations to combine Hiroishi with
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`Nozaki and/or Ando for using a the mobile device GUI for image deletion on the camera; (12) that the
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`method claims are rendered obvious by pairing being obvious and/or by the Hiroishi and/or Hollstrom
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`devices being obvious to use for paired connections; and/or (13) new theory of obviousness for using
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`HTTP to upload received medias file along with user information;
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`The improper new matters throughout Canon’s Reply and Exhibits are not proper for rebuttal,
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`such matters could have been presented in Canon’s Petition, e.g. to make out a prima facie case of
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`unpatentability, and such matters were naturally not addressed or acknowledged in the Board’s
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`Institution Decision.
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`Cellspin’s Sur-Reply and its cited evidence were primarily and substantially devoted to
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`attempting to address improper new evidence and arguments in Canon’s Reply that were not proper
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`rebuttal and that Canon could have presented earlier, even though Cellspin had inadequate time and
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`briefing space to address them, and even though Cellspin would be grievously unfairly prejudiced if
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`the Board erroneously considered such improperly new matters in and supporting Canon’s improper
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`Reply.
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` Thus, it would be a grievous and fundamentally unfair move by the Board to improperly strike
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`Cellspin’s responsive matters in and cited by its Sur-Reply, including if the Board declined to strike
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`the improperly new assertions in Canon’s Reply to which Cellspin was responding. Further, in order
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`to fairly consider any motion to strike brought by Canon directed to Cellspin’s Sur-Reply, the Board
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`must give considerable weight to the fact that Cellspin had to include such matters in its Sur-Reply to
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`4
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`fairly address the myriad of new matters asserted in Canon’s Reply.
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`IPR2019-0027
`U.S. Pat. No. 9,258,698
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`Further, if the Board strikes the improperly new matters in Canon’s Reply, then it will likely
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`moot the need to address many of the matters in Cellspin’s Sur-Reply, because many of the matters in
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`Cellspin’s Sur-Reply are responding to improper new matters in Canon’s Reply.
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`At a minimum, due process and fundamental fairness would require striking all, or at least
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`substantially all, of Canon’s Reply and the evidences it relied upon, including the wholly improper
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`Madisetti Declaration at Ex. 1043.
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`Canon’s Reply and evidence far beyond proper rebuttal unfairly prejudices Cellspin because
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`Canon should have included such matters in its Petition, a sur-reply is a poor vehicle for attempting to
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`address such improper Reply matters, and Cellspin lacked a fair opportunity, time-wise, space-wise or
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`procedurally, to properly rebut Canon’s improper new evidence and arguments. See Apple, Case
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`IPR2015-00412, slip op. at 44 (“Accepting such belatedly presented new arguments would be unjust
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`to the Patent Owner and we decline to do so.”). Canon should not be allowed a second and much
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`belated bite at the apple in an effort to avoid the consequences of its chosen grounds for institution.
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`Finally, the new expert declaration at Ex. 1043 is the backbone of Canon’s. Canon’s Reply
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`repeats and cites to the declaration extensively throughout. Thus, the Reply should be stricken as well.
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`See Consolidated Guide, p. 74 (“The Board is not required to attempt to sort proper from improper
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`portions of the reply or sur- reply.”) Alternatively, the Board could strike the exhibits and treat the
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`statements in the Reply citing to those exhibits as unsupported attorney argument.
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`Dated: December 18, 2019
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`Respectfully submitted,
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`/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
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`IPR2019-0027
`U.S. Pat. No. 9,258,698
`Facsimile: 213-835-6996
`Email: pto-edmonds@ip-lit.com
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`Counsel for Patent Owner, Cellspin Soft, Inc.
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing PATENT OWNER
`CELLSPIN’S NOTICE OF BASIS FOR RELIEF REQUESTED UNDER 37 C.F.R. §
`42.21 PURSUANT TO THE DECEMBER 13, 2019 ORDER was served in its entirety on
`December 18, 2019, upon the following parties via electronic service:
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`David T. Xue
`Karineh Khachatourian
`Rimon Law
`2479 East Bayshore Road, Suite 210 Palo
`Alto, CA 94303
`david.xue@rimonlaw.com
`karinehk@rimonlaw.com
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`Jennifer C. Bailey
`Adam P. Seitz Erise
`IP, P.A.
`7015 College Boulevard, Suite 700
`Overland Park, KS 66211
`jennifer.bailey@eriseip.com
`adam.seitz@eriseip.com
`PTAB@eriseip.com
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`Attorneys for Petitioners GoPro, Inc. Garmin International, Inc., and Garmin USA, Inc.
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`Jared Newton
`jarednewton@quinnemaneul.com
`Quinn Emanuel Urquhart & Sullivan
`1300 I Street NW, 9th Floor
`Washington, DC 20005
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`Attorneys for Petitioners Canon Corporation of North America and Canon Corporation
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`/s/ John J. Edmonds
`John J. Edmonds
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`6
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