Trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 37
`Date: December 23, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CANON U.S.A., INC., GOPRO, INC.,
`GARMIN INTERNATIONAL, INC., AND GARMIN USA, INC.,
`Petitioners,
`
`v.
`
`CELLSPIN SOFT, INC.,
`Patent Owner.
`_____________
`
`Case IPR2019-001271
`Patent 9,258,698 B2
`
`
`
`
`Before, GREGG I. ANDERSON, DANIEL J. GALLIGAN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`1 GoPro, Inc., Garmin International, Inc. and Garmin USA, Inc. were joined
`as parties to this proceeding. Paper 27.
`
`
`
`571-272-7822
`
`
`
`
`Paper 37
`Date: December 23, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CANON U.S.A., INC., GOPRO, INC.,
`GARMIN INTERNATIONAL, INC., AND GARMIN USA, INC.,
`Petitioners,
`
`v.
`
`CELLSPIN SOFT, INC.,
`Patent Owner.
`_____________
`
`Case IPR2019-001271
`Patent 9,258,698 B2
`
`
`
`
`Before, GREGG I. ANDERSON, DANIEL J. GALLIGAN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`ORDER
`Trial Hearing
`37 C.F.R. § 42.70
`
`
`
`
`
`
`
`1 GoPro, Inc., Garmin International, Inc. and Garmin USA, Inc. were joined
`as parties to this proceeding. Paper 27.
`
`
`
`
`IPR2019-00127
`Patent 9,258,698 B2
`
`
`Petitioner Canon U.S.A., Inc. (Canon) and Cellspin Soft, Inc. (“Patent
`Owner”) have requested an Oral Hearing in the above captioned matters.
`Papers 31 (Canon) and 32 (Patent Owner). The requests are granted.
`Allotted Argument Time
`Oral arguments in will commence at 1:00 pm ET on January 28, 2020,
`at the USPTO Headquarters on the ninth floor of Madison Building East,
`600 Dulany Street, Alexandria, Virginia. The hearing will be open to the
`public for in-person attendance that will be accommodated on a first-come,
`first-served basis. The parties are directed to contact the Board at least 10
`days in advance of the hearing if there are any concerns about disclosing
`confidential information. The Board will provide a court reporter for the
`hearing, and the reporter’s transcript will constitute the official record of the
`hearing. To facilitate planning, each party must send an email message to
`PTABHearings@uspto.gov five days prior to the hearing if the number
`planning to attend the hearing in-person for its side (attorneys and others)
`exceeds five people.
`Petitioner Canon and Patent Owner each request sixty (60) minutes of
`total argument time. Paper 31, 1; Paper 32, 2. Canon and Patent Owner
`each will have sixty (60) minutes total argument time for this case and
`only this case. Petitioner bears the ultimate burden of proof that the claims
`at issue in this review are unpatentable. Therefore, at oral hearing Canon
`will proceed first to present its case on challenges to patentability and any
`pending motions of Canon. Thereafter, Patent Owner will argue its
`opposition to Canon’s case and motions, as well as its pending motions.
`Canon then may use any time Canon reserved to rebut Patent Owner’s
`
`2
`
`
`
`IPR2019-00127
`Patent 9,258,698 B2
`
`opposition and oppose Patent Owner’s motions. Finally, Patent Owner may
`request an opportunity to present a brief sur-rebuttal.
`Requests for Live Testimony
`Requests for live testimony will be given due consideration. A party
`requesting live testimony should explain why and how this consideration
`applies, for example where an inventor is attempting to antedate a reference
`by establishing a prior reduction to practice. See K-40 Electronics, LLC v.
`Escort, Inc., IPR2013-00203 (PTAB May 21, 2014) (Paper 34). Other
`factors may include the importance of the issue that is the subject of the
`testimony. The Board is more likely to grant oral testimony critical to issues
`that are case-dispositive. Id. at 2.
`Confidentiality
`There is a strong public policy interest in making all information
`presented in these proceedings public, as the review determines the
`patentability of claims in an issued patent and thus affects the rights of the
`public. This policy is reflected in part, for example, in 35 U.S.C. § 316(a)(1)
`and 35 U.S. C. § 326(a)(1) which provide that the file of any inter partes
`review or post grant review be made available to the public.
`At this time, the parties are advised that the Board exercises its
`discretion to make the oral hearing publically available via in-person
`attendance. In-person attendance will be accommodated on a first come first
`serve basis.
`Request for Pre-hearing Conference
`A pre-hearing conference to occur no later than three business days
`before the hearing will be held at either party’s request. The purpose of a
`pre-hearing conference is to afford the parties the opportunity to preview
`
`3
`
`
`
`IPR2019-00127
`Patent 9,258,698 B2
`
`(but not argue) issues to be discussed at the oral hearing, and to seek the
`Board’s guidance as to particular issues that the panel would like the parties
`to address at oral argument. The parties may also discuss with the Board
`any pending motions to strike, request an early decision on the admissibility
`of a limited number of exhibits subject to a motion to exclude, and discuss
`any unresolved issues with demonstrative exhibits. The Board may rule on
`objections and disputed exhibits during the pre-hearing conference, or after
`the pre-hearing conference and before the oral hearing. The Board may also
`defer ruling until the oral hearing or thereafter.
`Prior to requesting a pre-hearing conference, the parties should meet
`and confer and, when possible, send a joint request to the Board with an
`agreed upon set of limited issues for discussion. A request for a pre-hearing
`conference may be made by e-mail and shall include a list of issues to be
`discussed, including but not limited to, identification of a limited number of
`objections for early resolution.
`Demonstrative Exhibits
`Demonstrative exhibits used at the final hearing are aids to oral
`argument and not evidence, and should be clearly marked as such. Each
`slide of a demonstrative exhibit should be marked with the words
`“DEMONSTRATIVE EXHIBIT – NOT EVIDENCE” in a footer.
`Demonstrative exhibits cannot be used to advance arguments or introduce
`evidence not previously presented in the record. See Dell Inc. v. Acceleron,
`LLC, 884 F.3d 1364, 1369 (Fed. Cir. 2018) (noting that the “Board was
`obligated to dismiss [the petitioner’s] untimely argument . . . raised for the
`first time during oral argument”). Demonstrative exhibits should cite to
`evidence in the record.
`
`4
`
`
`
`IPR2019-00127
`Patent 9,258,698 B2
`
`
`During the hearing, the presenter must identify clearly and specifically
`each demonstrative exhibit (e.g., by slide or screen number) referenced
`during the hearing to ensure the clarity and accuracy of the reporter’s
`transcript. The parties also should note that at least one member of the panel
`for each proceeding will be attending the hearings electronically from a
`remote location and that if a demonstrative is not filed or otherwise made
`fully available or visible to the judge presiding over the hearing remotely,
`that demonstrative will not be considered. If the parties have questions as to
`whether demonstrative exhibits would be sufficiently visible and available to
`all of the judges, the parties are invited to contact the Board at 571-272-
`9797.
`
`Any demonstrative exhibits must be served seven business days
`before the hearing. 37 C.F.R. § 42.70(b). The parties are encouraged to
`resolve objections to demonstrative exhibits by conferring prior to
`submitting the exhibits to the Board. Objections to demonstratives should
`be carefully considered and framed as the Board has not found that such
`objections are helpful in many cases. Any unresolved issue regarding
`demonstrative exhibits should be addressed during a pre-hearing conference.
`Any objection to demonstrative exhibits that is not timely presented will be
`considered waived.
`Demonstratives should be filed at the Board no later than two days
`before the hearing. A hard copy of the demonstratives should be provided to
`the court reporter at the hearing.
`Equipment Requests
`Hearing rooms are equipped with projectors for PowerPoint
`presentations. A party should advise the Board as soon as possible before an
`
`5
`
`
`
`IPR2019-00127
`Patent 9,258,698 B2
`
`oral argument of any special needs. Examples of such needs include
`additional space for a wheelchair, an easel for posters, or an overhead
`projector (“Elmo”). Parties should not make assumptions about the
`equipment the Board may have on hand. Such requests should be directed in
`the first instance to a Board Trial Division paralegal at (571) 272-9797.
`Attendance of Counsel
`The Board generally expects lead counsel for each party to be present
`in person at the oral hearing. However, any counsel of record may present
`the party’s argument as long as that counsel is present in person.
`A party may request that counsel be permitted to present arguments
`remotely from an alternative USPTO location. The available locations
`include the Texas Regional Office in Dallas, Texas; the Rocky Mountain
`Regional Office in Denver, Colorado; the Elijah J. McCoy Midwest
`Regional Office in Detroit, Michigan; and the Silicon Valley Office in San
`Jose, CA. To request that counsel be permitted to present arguments from a
`remote location, a party should send an email message to
`PTABHearings@uspto.gov at least ten business days or as soon as practical
`prior to the hearing and provide a short statement of reasons for the request.
`The Board will notify the parties if the request is approved. Approval of the
`request does not guarantee that a panel member will be present at the remote
`location.
`A party may also request remote video attendance for one or more of
`its other attendees to view the hearing from any USPTO location. To
`request remote video viewing, a party must send an email message to
`PTABHearings@uspto.gov ten business days prior to the hearing, indicating
`the requested location and the number planning to view the hearing from the
`
`6
`
`
`
`IPR2019-00127
`Patent 9,258,698 B2
`
`remote location. The Board will notify the parties if the request for video
`viewing is granted. Note that it may not be possible to grant the request due
`to the availability of resources.
`Any special requests for audio-visual equipment should be directed to
`PTABHearings@uspto.gov. A party may also indicate any special requests
`related to appearing at an in-person oral hearing, such as a request to
`accommodate physical needs that limit mobility or visual or hearing
`impairments, and indicate how the PTAB may accommodate the special
`request. Any special requests must be presented in a separate
`communication not less than five (5) days before the hearing.
`ORDER
`
`Accordingly, it is
`ORDERED that the Oral Hearing shall commence at 1 pm Eastern
`Time, on Thursday, January 28, 2020, at USPTO headquarters on the
`ninth floor of Madison Building East, 600 Dulany Street, Alexandria,
`Virginia.
`
`
`PETITIONER:
`
`Jared Newton
`jarednewton@quinnemanuel.com
`
`PATENT OWNER:
`
`John Edmonds
`pto-edmonds@ip-lit.com
`
`Eric Carr
`ecarr@ip-lit.com
`
`7
`
`
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