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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`v.
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`CELLSPIN SOFT, INC.
`Patent Owner
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`U.S. Patent No. 9,258,698
`Inter Partes Review No. 2019-00127
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`PETITIONER CANON U.S.A., INC.’S
`NOTICE OF BASIS FOR RELIEF REQUESTED UNDER 37 C.F.R. § 42.21
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`___________________
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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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`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
`___________________
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`PETITIONER CANON U.S.A., INC.’S
`NOTICE OF BASIS FOR RELIEF REQUESTED UNDER 37 C.F.R. § 42.21
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`U.S. Patent No. 9,258,698
`Petitioner’s Notice of Basis for Relief
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`Pursuant to the Board’s authorization provided in an email dated December
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`13, 2019, Petitioner Canon U.S.A., Inc. (“Petitioner” or “Canon”) submits the
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`following Notice of Basis for Relief Requested under 37 C.F.R. § 42.21.
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`Specific Relief Requested. Canon requests authorization to file a motion to
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`strike: (1) Exhibits 2026-2033, which Patent Owner Cellspin Soft, Inc. (“Patent
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`Owner” or “Cellspin”) filed with its sur-reply filed on December 3, 2019; and (2)
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`arguments in the sur-reply that are based on these Exhibits.1
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`Basis for Relief Requested. The Board’s Consolidated Trial Practice Guide
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`(“Guide”) expressly prohibits a patent owner from submitting new evidence with a
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`sur-reply, other than transcripts for cross-examination of a reply witness. See
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`Guide at 73 (“The sur-reply may not be accompanied by new evidence other than
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`deposition transcripts of the cross-examination of any reply witness.”). Patent
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`Owner violated this prohibition by filing eight new exhibits with its sur-reply, none
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`1 Patent Owner’s updated exhibit list identified two additional exhibits in
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`connection with its Reply: Exhibits 2024 and 2025. However, Patent Owner did
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`not file these exhibits and has waived any right to rely on them. To the extent
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`Patent Owner is permitted to file and rely upon Exhibits 2024 and 2025, Petitioner
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`reserves the right to address them in its motion to strike.
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`- 1 -
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`U.S. Patent No. 9,258,698
`Petitioner’s Notice of Basis for Relief
`of which were cross-examination transcripts.2 The new exhibits include a 54-page
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`expert declaration (Ex. 2026); printouts from Petitioner’s website (Exs. 2027-
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`2028); a patent publication (Ex. 2029); an excerpt of the prosecution history for the
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`U.S. Patent No. 9,258,698 (Ex. 2030); and three technical references spanning
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`hundreds of pages (Ex. 2031-2033). Patent Owner did not seek authorization to
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`file these exhibits with its sur-reply. Thus, the exhibits should be stricken, along
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`with any arguments in Patent Owner’s sur-reply that are based on the exhibits.
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`In addition to violating the Guide, Patent Owner’s new exhibits and sur-
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`reply are highly prejudicial to Petitioner. Patent Owner’s expert declaration (Ex.
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`2026) includes new opinions based on new evidence, and Petitioner will not have
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`the opportunity to cross-examine the witness on these new opinions and evidence.
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`The declaration also attempts to explain away or retract admissions the expert
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`made in his deposition given after Cellspin filed its Patent Owner Response.
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`Patent Owner’s counsel had the opportunity to address those admissions through
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`redirect examination, but chose not to. Patent Owner also relies on the declaration
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`and several new exhibits to support its improper claim construction positions.
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`These positions were set forth in Cellspin’s Patent Owner Response, and Cellspin
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`2 Canon offered to make its sur-reply witness available for deposition, but
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`Cellspin declined the opportunity to take one.
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`U.S. Patent No. 9,258,698
`Petitioner’s Notice of Basis for Relief
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`should have submitted all evidence and expert testimony to support its positions at
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`that time.
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`Because Patent Owner’s sur-reply and accompanying exhibits violate the
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`Guide and would prejudice Petitioner, Petitioner respectfully requests authorization
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`to file a motion to strike. Petitioner reserves the right strike the sur-reply in its
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`entirety given that Patent Owner’s new arguments and evidence pervade the sur-
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`reply. See Guide, p. 74 (“The Board is not required to attempt to sort proper from
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`improper portions of the reply or surreply.”).
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`Date: December 18, 2019
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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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`U.S. Patent No. 9,258,698
`Petitioner’s Notice of Basis for Relief
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), 42.105(a), the undersigned hereby certifies
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`service on the Patent Owner of a copy of this document to the following:
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`John J. Edmonds
`Email: pto-edmonds@ip-lit.com
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`Stephen F. Schlather
`Email: sschlather@ip-lit.com
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`Date: December 18, 2019
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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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