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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Panasonic Corporation and Panasonic Corporation of North America
`Petitioners,
`
`v.
`
`Cellspin Soft, Inc.
`Patent Owner.
`
`
`CASE: IPR2019-001311
`Patent No. 9,258,698
`
`PATENT OWNER CELLSPIN’S RESPONSE TO PANASONIC’S
`MOTION TO STRIKE
`
`
`1 GoPro, Inc., Garmin International, Inc. and Garmin USA, Inc. were joined as parties to
`this proceeding. Paper 27.
`
`1
`
`
`

`

`TABLE OF CONTENTS
`
`TABLE OF AUTHORITIES ............................................................................... ii
`
`I. Introduction ..................................................................................................... 1
`
`II. Argument ........................................................................................................ 1
`
`
`A. The evidence submitted with Cellspin’s Sur-Reply, and the Sur-
`Reply, Were a Necessary and Proper Response to the Improper
`New Matters ............................................................................................... 1
`
`
`B. Cellspin’s Necessary and Proper Response to Panasonic’s
`Improper New Matters Should Not be Stricken in Whole or Part ............ 7
`
`
`C. Panasonic’s Authorities Are Inapplicable and/or Fail to
`Overcome Cellspin’s Due Process and/or APA Rights ............................. 9
`
`
`D. Application of PTAB Rules or a Ruling Permitting Panasonic to
`Submit its Alleged Rebuttal Reply Evidence and/or to Assert
`New Non-Rebuttal,
`Improper Theories, Grounds
`and
`Arguments, While Denying Cellspin the Right to Submit its
`Proper Sur-Reply and/or Sur-Reply Rebuttal Evidence
`Constitutes a Violation of Due Process ..................................................... 10
`
`
`E. The Cited “Examples” are Misleading and Do Not Justify
`Extreme Relief ........................................................................................... 11
`
`
`F. To the Extent that Leave Would be Necessary, it Should be
`Granted ....................................................................................................... 12
`
`
`G. The Board should deny the motion as being premature and
`unnecessary ................................................................................................ 12
`
`
`to
`the Sur-Reply Due
`H. The Board Should Not Strike
`Spacing/Count Issues ................................................................................. 13
`
`
`J. Even if the Board Struck Some or All Sur-Reply Evidence, it
`Would be Improper including Under Due Process, to Strike Any
`of the Sur-Reply ......................................................................................... 15
`
`
`
`i
`
`

`

`
`III. Conclusion ............................................................................................... 15
`
`
`
`TABLE OF AUTHORITIES
`
`Cases:
`
`Yeda Res. v. Mylan, 906 F.3d 1031 (Fed. Cir. 2018) ...................................... 8
`
`Genzyme v. Biomarin Pharm., 825 F.3d 1360 (Fed. Cir. 2016) ..................... 8
`
`In re NuVasive, 841 F.3d 966, 973 (Fed. Cir. 2016) ....................................... 8
`
`Intelligent Bio-Sys. v. Illumina Cambridge, 821 F.3d 1359 (Fed. Cir. 2016) 8
`
`Dell v. Acceleron, 818 F.3d 1293 (Fed. Cir. 2016) ......................................... 8
`
`Belden v. Berk-Tek, 805 F.3d 1064 (Fed. Cir. 2015) ...................................... 8, 15
`
`Apple v. e-Watch, IPR2015-00412 (Paper 50) (PTAB May 6, 2016) ............. 8
`
`Abbott Labs. v. Cordis, 710 F.3d 1318, 1328 (Fed. Cir. 2013) ...................... 8
`
`U.S. v. Olano, 507 U.S. 725, 733 (1993) ........................................................ 9
`
`Keystone Driller v. General Excavator, 290 U.S. 240 (1933) ........................ 9
`
`Cisco Sys. v. Oyster Optics, IPR2017-01724 (Paper 25) (Sept. 28, 2017) ..... 9
`
`Trane U.S. v. SEMCO, IPR2018-00514 (PTAB Apr. 17, 2019) .................... 10
`
`Fluke v. Ametek, IPR2016-01428 (Paper 26) (Aug. 16, 2017) ....................... 13
`
`EMC v. Intellectual Ventures, II, IPR2016-01106 (Paper 23)
`(July 17, 2017) ................................................................................................. 13
`
`Silicon Labs. v. Cresta Tech., IPR2015-00615 (Paper 26)
`(PTAB Feb. 29, 2016) ..................................................................................... 13
`
`ii
`
`
`
`
`
`

`

`Snap-On v. Milwaukee Elec., IPR2015-01242 (PTAB Aug. 19, 2016) ......... 13, 14
`
`Pi-Net Intl. v. JPMorgan Chase, 600 F.App’x 774 (Fed. Cir. 2015) ............. 15, 16
`
`Aver Info. v. Pathway Innov. & Techs., IPR2017-02108 (Paper 27)
`(PTAB Nov. 30, 2018) .................................................................................... 15
`
`
`Constitution and Statutes:
`
`37 C.F.R. §42.23(b) ........................................................................................ Passim
`
`5 U.S.C. §§ 554(b)-(c), 556(d), 557(c) .......................................................... Passim
`
`U.S. Constitution, Due Process Clause .......................................................... Passim
`
`37 C.F.R. § 42.6(a)(2)(ii) ................................................................................... 14
`
`
`
`
`
`
`iii
`
`

`

`I.
`
`Introduction.
`
`Pending are motions to strike filed by Panasonic and Cellspin. Papers 44, 45. Per
`
`Cellspin’s Motion, the Board should strike the improper new theories, directions,
`
`approaches, arguments and evidence in Panasonic’s Reply and exhibits, which are
`
`not proper rebuttal and which could have presented in its prima facie case (the
`
`“Improper New Matters)” including as noted herein and in Paper 45. As also noted
`
`in the Cellspin’s Motion, the Reply constitutes an unfairly prejudicial violation of
`
`37 C.F.R. §42.23(b), the Administrative Procedure Act (“APA”) and due process,
`
`including because everything, or at minimum substantially everything, is Improper
`
`New Matters. Panasonic’s complaints about prejudice ring hollow. Cellspin’s Sur-
`
`Reply and evidence were a necessary and proper response, pursuant to Cellspin’s
`
`due process and APA rights, to have fair notice and opportunity to be heard
`
`(hereinafter a “Necessary and Proper” response), attempting, in a Sur-Reply, to rebut
`
`Improper New Matters. Panasonic’s Motion should be denied, including because it
`
`would be an unfair violation of Cellspin’s above rights to improperly strike
`
`Cellspin’s rebuttal matters in and cited by its Sur-Reply, including without striking
`
`the Improper New Matters to which Cellspin Necessarily and Properly responded.
`
`II. Argument.
`
`A. The evidence submitted with Cellspin’s Sur-Reply, and the Sur-Reply,
`Were a Necessary and Proper Response to the Improper New Matters.
`
`1
`
`
`

`

`Ex. 2026, ¶10, referenced at Sur-Reply p. 2, is a Necessary and Proper Response
`
`to objections to Ex. 2009 improperly raised in the Reply. This properly refutes
`
`objections that Ex. 2009 had Dr. Foley copied from or parroted Cellspin’s Response.
`
`Ex. 2026, ¶¶11-12, referenced at Sur-Reply p. 2, are a Necessary and Proper
`
`Response to the Improper New Matters noted at III.C-F and G of Cellspin’s Motion,
`
`which involve, in part, Panasonic and Strawn’s Improper New Matters involving
`
`details from the 1200+ pages of the Bluetooth (“BT Spec.”), not cited in the Petition
`
`or Ex. 1024, now connecting details (e.g. 4 digit PIN) of Mashita with details of BT
`
`pairing, authentication and encryption from the BT Spec., issues which the Reply
`
`and Ex. 1024 newly assert and conflate. E.g., Ex. 2026, ¶12 (“reply… conflate[s]”).
`
`This also prefaces discussion that follows, including, at ¶¶13-22, 31-66.
`
`Ex. 2026, ¶¶13-15, referenced at Sur-Reply pp. 3-4, are also a Necessary and
`
`Proper Response to the Improper New Matters noted at Sections III.C-F of
`
`Cellspin’s Motion to Strike, which involve, in part, Panasonic and Dr. Strawn’s new
`
`claim construction evidence/arguments. E.g., Ex. 2026, ¶ 13 (“…take[s] issue …
`
`Cellspin’s construction…”). Ex. 2026, ¶15 also addresses “Pairing under BRI as
`
`Contrasted with Pairing under Phillips,” which is an issue that arose after Cellspin
`
`filed its Response when the Board allowed Garmin/GoPro to join this proceeding.
`
`See Paper 29. However, the Board has clarified full application of BRI; thus, this
`
`portion of ¶15 has no substantive import and was not cited in the Sur-Reply.
`
`
`
`2
`
`

`

`Ex. 2026, ¶¶16-18, which fall under the heading that, “…mention of Bluetooth
`
`… does not establish … paired,” which are relied upon at Sur-Reply pp. 1 and 6-7,
`
`are a Necessary and Proper Response to Improper New Matters, including at Reply,
`
`pp. 9, 12-14, 18, 22 (e.g., p. 22 “every Bluetooth device necessarily was configured
`
`to establish a paired Bluetooth connection and, in turn, cryptographically
`
`authenticate”) and Ex. 1024, ¶¶12-22, 48, 57, including per §III.C-F, G of Cellspin’s
`
`Motion, including based upon new details from the BT Spec. as asserted by Ex.
`
`1024, and including new arguments that “Mashita’s … no different from any …
`
`paired Bluetooth” and “cameras …are configured …because …Bluetooth
`
`capability.” E.g., at Ex. 2026, ¶ 18, it addresses the new “assumption… that
`
`…‘Bluetooth’… means … capable of … the specification...”
`
`Ex. 2026, ¶¶19-22, which are relied upon at Sur-Reply pp. 15-20, are a Necessary
`
`and Proper Response to the Improper New claim construction and invalidity Matters
`
`for “cryptographically authenticating,” including at pp. 4, 18-19 of Panasonic’s
`
`Reply and ¶¶6-9, 15-16 of Ex. 1024; and to the Improper New Matters noted at
`
`Section III.G-H of Cellspin’s Motion to Strike. E.g., Ex. 2026, ¶19 (“Dr. Strawn and
`
`Panasonic’s contention that “encryption” is … unclaimed …is unfounded.’); Ex.
`
`2026, ¶20 (“Panasonic and Dr. Strawn’s main argument for exchanging a PIN being
`
`cryptographic is an overbroad construction…”); Ex. 2026, ¶21 (“The unstated
`
`implication made by Panasonic and Dr. Strawn is that Mashita’s PIN might
`
`
`
`3
`
`

`

`theoretically be used to generate encryption keys…”); Ex. 2026, ¶22 (“Panasonic
`
`and Dr. Strawn attempt to side-step their erroneous position on the construction of
`
`“cryptographically authenticating” by constructing an argument…”).
`
`Ex. 2026, ¶¶ 23-26, which are relied upon at Sur-Reply pp. 4-5, are a Necessary
`
`and Proper Response to the Improper New claim construction Matters for “Graphical
`
`User Interface,” including at pp. 5 and 27-29 of Panasonic’s Reply and ¶¶58-61 of
`
`Ex. 1024. E.g., Ex. 2026, ¶23 (“…assertion that Cellspin’s construction of GUI errs
`
`in distinguishing graphical interfaces from “text-based” interfaces…”); Ex. 2026,
`
`¶24 (“argument …that using keystrokes …constitutes GUI…”); Ex. 2026, ¶25
`
`(“Strawn argue[s] …record does not support a GUI having …graphics-based…”):
`
`Ex. 2026, ¶26 (“… argues … Cellspin’s …patent … does not meet … GUI …”).
`
`Ex. 2026, ¶¶ 27-30, which are relied upon at Sur-Reply pp. 5-6, are a Necessary
`
`and Proper Response to Improper New Matters in Panasonic’s Reply, pp. 29-30 and
`
`Ex. 1024, including ¶¶23-28. Ex. 2026, ¶¶ 27-28 address the new theory that “a …
`
`application” can refer to multiple applications. Ex. 2026, ¶¶ 29-30 addresses
`
`Panasonic’s New Improper Reply obviousness theory that use of multiple modules
`
`renders obvious the “software application” elements, as noted at Cellspin’s Motion
`
`§III.B. Ex. 2026, ¶29 specifically notes the new argument at “Ex 1024 ¶25.”
`
`Ex. 2026, ¶¶ 31-66, which are relied upon at Sur-Reply pp. 7-15, are a Necessary
`
`and Proper Response to Improper New Matters, including now connecting details of
`
`
`
`4
`
`

`

`Mashita with new details and theories about BT pairing, authentication and
`
`encryption from the BT Spec. Ex. 2026, ¶¶ 31 begins by noting that “Panasonic and
`
`Dr. Strawn … contend that Mashita authenticates” with a PIN which they newly
`
`assert in Reply is a BT passkey and that Mashita’s PIN exchange results in BT
`
`pairing and BT passkey encryption. See, e.g., Ex. 1024, ¶¶ 9,40, 49 & 94.” Further,
`
`Ex. 2026, ¶¶ 36, 38, 40, 51 and 62, specifically point to Improper New Matters in
`
`Ex. 1024, and the remaining paragraphs in this section are devoted, or at least almost
`
`entirely devoted, to addressing and refuting the foregoing Improper New Matters
`
`and those at Ex. 1024, ¶¶12-21. Without limitation, Ex. 2026, ¶¶ 51-56 are a
`
`Necessary and Proper Response to the Improper New Matters concerning Mashita’s
`
`PIN being the same or interchangeable with BT passkey, about an “automatic”
`
`paired connection resulting from a PIN, and/or about nothing more being required
`
`than Mashita’s PIN to accomplish BT pairing, which are described at Motion §III.C.
`
`Ex. 2026, ¶¶67-84, which are relied upon at Sur-Reply pp. 15-20, are a Necessary
`
`and Proper Response to Improper New Matters. Ex. 2026, ¶¶67-70 specifically
`
`address new arguments and evidence cited in Panasonic’s Reply. At Ex. 2026, ¶ 70,
`
`it specifically points out how New Improper Matter from “Ex 1024 ¶15” is incorrect.
`
`Ex. 2026, ¶¶ 71-84 address Panasonic/Strawn’s Improper New Matters asserting that
`
`“paired wireless connection” is obvious, as noted in §III.A of Cellspin’s Motion.
`
`
`
`5
`
`

`

`Ex. 2026, ¶ 85, which falls under the heading “Cellspin’s Arguments Apply to
`
`the Non-Method Challenged Claims,” and which is relied upon at Sur-Reply p. 20,
`
`is a Necessary and Proper Response to the Improper New Matters at p. 22 of
`
`Panasonic’s Reply wherein it expressed a new theory/argument/position that
`
`“Cellspin’s Arguments Do Not Apply to the Non-Method Challenged Claims,”
`
`which is based in part upon Improper New Matters noted above from the BT Spec.
`
`Ex. 2026, ¶¶ 86-95, which are relied upon at Sur-Reply pp. 20-22, area Necessary
`
`and Proper Response to the Improper New Matters at Reply, p. 23, asserting “…no
`
`temporal requirement” as claimed. Reply, p. 23.
`
`Ex. 2026, ¶¶ 96-105, which are relied upon at Sur-Reply pp. 22-24, are a
`
`Necessary and Proper Response to the Improper New Matters at Reply, pp. 23-27
`
`and Ex. 1024, ¶¶32-37 and 40-43, which are described at §III.I of Cellspin’s Motion.
`
`Ex. 2026, ¶¶ 106-110, which are relied upon at Sur-Reply pp. 24-25, are a
`
`Necessary and Proper Response to the Improper New Matters at Reply, pp. 23-27,
`
`which is described in at §III.I of Cellspin’s Motion. For example, at Ex. 2026, ¶109,
`
`it specifically notes that New Improper Matter from “Ex 1024 ¶34” is incorrect.
`
`Ex. 2026, ¶¶ 111-116, which are relied upon at Sur-Reply p. 26, are a Necessary
`
`and Proper Response to Improper New Matters, including at Reply, pp. 27-29 and
`
`Ex. 1024, ¶¶58-61, including that combining Mashita’s mobile GUI with Onishi’s
`
`
`
`6
`
`

`

`concept of deletion is somehow obvious. E.g., Ex. 2026, ¶¶ 111 (“Panasonic’s new
`
`theory is that … Mashita’s mobile GUI with the Onishi’s concept of …delete”).
`
`Ex. 2026, ¶¶ 117-119, referenced Sur-Reply p. 26, are a Necessary and Proper
`
`Response to Improper New Matters, including at Panasonic’s Reply at pp. 29-30 and
`
`Ex. 1024, ¶25-30 about multiple modules performing claimed functions rendering
`
`obvious a single client application, which is described in §III.B of Cellspin’s Motion.
`
`Ex. 2026, ¶¶ 7 and 120, which are relied upon at Sur-Reply p. 1, are merely
`
`summarizing the points made elsewhere in the Declaration, and thus they are a
`
`Necessary and Proper Response to the Improper New Matters noted above.
`
`Ex. 2026, ¶¶ 1-6 and 9 are merely introductory information, and thus they are a
`
`Necessary and Proper Response to the Improper New Matters noted above.
`
`Finally, Ex. 2026-2029 and 2031-2033 are cited in the above paragraphs and thus
`
`constitute a Necessary and Proper Response to Improper New Matters.
`
`B. Cellspin’s Necessary and Proper Response to Panasonic’s Improper New
`Matters Should Not be Stricken in Whole or Part.
`Panasonic’s Motion seeks the draconian relief of striking Cellspin’s entire Sur-
`
`Reply and supporting evidence. However, Cellspin’s Necessary and Proper
`
`Response to Panasonic’s Improper New Matters should not be stricken in whole
`
`(which Panasonic has requested) or part (which Panasonic has not requested). Such
`
`draconian relief, especially in view of the manifest Improper New Matters submitted
`
`in and with Panasonic’s Reply, would violate Cellspin’s rights under 37 C.F.R.
`
`
`
`7
`
`

`

`§42.23(b), the APA and due process, including fair notice and the opportunity to
`
`respond and be fairly heard, and it would unfairly prejudice Cellspin. See Yeda Res.
`
`v. Mylan, 906 F.3d 1031, 1040 (Fed. Cir. 2018); Genzyme v. Biomarin Pharm., 825
`
`F.3d 1360, 1365-66 (Fed. Cir. 2016); In re NuVasive, 841 F.3d 966, 973 (Fed. Cir.
`
`2016); Intelligent Bio-Sys. v. Illumina Cambridge, 821 F.3d 1359, 1369-70 (Fed.
`
`Cir. 2016); Dell v. Acceleron, 818 F.3d 1293, 1301 (Fed. Cir. 2016); Belden v. Berk-
`
`Tek, 805 F.3d 1064, 1078, 1081 (Fed. Cir. 2015); Apple v. e-Watch, IPR2015-00412
`
`(Paper 50) (PTAB May 6, 2016); See Consol. Guide, pp. 73 & 80-81. See also 5
`
`U.S.C. §§554(b)-(c), 556(d), 557(c); Abbott Labs. v. Cordis, 710 F.3d 1318, 1328
`
`(Fed. Cir. 2013). Notably, Panasonic’s Motion does not assert that the evidence or
`
`briefing that it seeks to strike does not constitute a Necessary and Proper Response
`
`to the Improper New Matters in Panasonic’s Reply. Rather, Panasonic improperly
`
`seeks to use its Improper New Matters as a sword to seek invalidity while seeking
`
`to strike Cellspin’s Necessary and Proper Response, which attempted to address the
`
`Improper New Matters as best one could in Sur-Reply.
`
`Panasonic effectively invited Cellspin to submit the objected to evidence with
`
`Cellspin’s Sur-Reply, because the Sur-Reply and its evidence were a Necessary and
`
`Proper Response, pursuant to Cellspin’s due process and administrative rights noted
`
`herein to fair notice and a fair opportunity to be heard. Panasonic’s Motion should
`
`be denied on this basis alone, including because Panasonic’s Improper New Matters
`
`
`
`8
`
`

`

`should, at minimum, constitute a waiver – see, e.g., U.S. v. Olano, 507 U.S. 725, 733
`
`(1993) (waiver is intentional relinquishment or abandonment of a right) – or estoppel
`
`from any right to object to Cellspin’s Necessary and Proper Response in its Sur-
`
`Reply and evidence. Further, Panasonic’s Motion should be denied, at a minimum,
`
`due to Panasonic’s unclean hands in seeking relief based upon Cellspin’s Necessary
`
`and Proper response to Panasonic’s Improper New Matters in its Reply. E.g.,
`
`Keystone Driller v. General Excavator, 290 U.S. 240, 245 (1933). More
`
`fundamentally, Panasonic’s Motion should be denied because it would be a grievous
`
`and fundamentally unfair violation of Cellspin’s due process and administrative
`
`rights to improperly strike Cellspin’s responsive matters in and cited by its Sur-
`
`Reply, including if the Board declined to strike the Improper New Matters in
`
`Panasonic’s Reply to which Cellspin was Necessarily and Properly responding.
`
`Consistent with due process, the PTAB has noted fundamental fairness to Patent
`
`Owners where new evidence and argument have been submitted, such that Patent
`
`Owners should have an opportunity to fairly respond. E.g., Cisco Sys. v. Oyster
`
`Optics, IPR2017-01724 (Paper 25) (Sept. 28, 2017) (permitting sur-reply evidence).
`
`C. Panasonic’s Authorities Are Inapplicable and/or Fail to Overcome
`Cellspin’s Due Process and/or APA Rights.
`Without limitation, it is not inconsistent with the Practice Guide for the Board to
`
`grant leave to file Sur-Reply evidence or to deny striking Sur-Reply evidence when
`
`justice and due process require its consideration. Furthermore, the Mallinckrodt and
`
`
`
`9
`
`

`

`Navistar decisions relied upon by Panasonic did not involve the equitable and due
`
`process issues applicable here, including due to Panasonic’s Improper New Matters.
`
`To the extent those decisions might arguably apply here, they should apply to strike
`
`Panasonic’s Improper New Matters in accordance with Cellspin’s Motion.
`
`Further, Panasonic’s reliance upon Trane is misplaced, including because it does
`
`not involve the equitable and due process concerns at issue, the unfair prejudice here
`
`is applicable to Cellspin not Panasonic, there is no undue burden or loss of efficiency
`
`in reviewing evidence including proper rebuttal evidence. Trane U.S. v. SEMCO,
`
`IPR2018-00514 (PTAB Apr. 17, 2019). In any event, the unfair prejudice to Cellspin
`
`and its due process rights outweigh any burden or loss of efficiency.
`
`D. Application of PTAB Rules or a Ruling Permitting Panasonic to Submit
`its Alleged Rebuttal Reply Evidence and/or to Assert Improper New
`Matters, While Denying Cellspin the Right to Submit its Sur-Reply
`and/or Sur-Reply Rebuttal Evidence Constitutes Due Process Violation.
`Application of PTAB Rules, see Consol. Guide, p. 73, or a ruling from the Board
`
`permitting Panasonic to submit its alleged rebuttal Reply evidence, and/or to assert
`
`its New non-rebuttal, Improper theories, grounds and arguments, while denying
`
`Cellspin the right to submit its rebutting Sur-Reply and/or Sur-Reply rebuttal
`
`evidence, constitutes a violation of Cellspin’s due process rights, including to a fair
`
`hearing, notice and opportunity to respond and be heard. This is established by the
`
`facts of this matter and supported by the multiple due process and APA cases above.
`
`
`
`10
`
`

`

`E. The Cited “Examples” are Misleading and Do Not Justify Extreme Relief.
`Panasonic’s first “example” involves its distortion alleging that Dr. Foley made
`
`“admissions” that “undermined Cellspin’s theory that Mashita’s system would
`
`terminate the Bluetooth connection after every image transfer.” Mtn, p. 5.
`
`Panasonic’s Reply argument on this alleged admission relied upon Dr. Strawn’s
`
`expert declaration at Ex. 1024, ¶¶50-57. It was necessary and proper for Dr. Foley
`
`to clarify this issue in direct rebuttal to the Improper New arguments and evidence
`
`from Ex. 1024 contained in Panasonic’s Reply. As noted by Dr. Foley, his alleged
`
`admission was not an admission at all, including because Panasonic asked Dr. Foley
`
`about Fig. 7, which “The digital camera state machine depicted in Figure 7 “doesn’t
`
`have such a decision point…[thus] the digital camera terminates the wireless link
`
`with the cellular phone immediately after transmitting the file.” Ex. 2026, p. 31.
`
`Cellspin could not have known about how Panasonic and its expert would distort Dr.
`
`Foley’s testimony until they made the distortion in the Reply.
`
`Panasonic’s second “example” involves Dr. Foley’s addressing “Panasonic’s
`
`new theory [] that the combination of Mashita’s asserted GUI with the Onishi’ s
`
`concept … is …obvious …” Ex. 2026, ¶112. See Reply, p. 28. The theory being
`
`addressed was improperly new. Further, assuming arguendo that Panasonic has
`
`identified one, or two, allegedly improper matters in the Foley Dec. at Ex. 2026, this
`
`does not justify the draconian relief of striking the Sur-Reply and all its evidence.
`
`
`
`11
`
`

`

`F. To the Extent that Leave Would be Necessary, it Should be Granted.
`To the extent that leave would be necessary for Cellspin’s Sur-Reply or its
`
`evidence, such leave should be granted and request for such leave is hereby made.
`
`Including in view of the Practice Guide, it is unclear how Cellspin could realistically
`
`obtain leave in advance to file its Sur-Reply evidence, but Panasonic’s Motion
`
`criticizes Cellspin for not making the attempt beforehand. The due process and
`
`fundamental fairness issues herein are applicable whether or not Cellspin made a
`
`likely futile advance request to file its Sur-Reply evidence. Furthermore, Cellspin’s
`
`Motion to Strike, Panasonic’s Motion and Cellspin’s submitted Sur-Reply and
`
`evidence have now framed the issues for the Board to make a reasoned determination
`
`whether to grant leave, or alternatively whether Panasonic’s Motion should be
`
`denied. Furthermore, if the Board struck Cellspin’s Necessary and Proper Sur-Reply
`
`and evidence because Cellspin did not request advance leave, including when the
`
`Board’s Guidelines do not have a procedure for requesting such leave, that would
`
`also constitute an arbitrary and improper violation of Cellspin’s due process and
`
`APA rights. Further, the foregoing filings have not only framed the issues in dispute,
`
`they have also provided an appellate record if needed. Thus, Cellspin’s filings were,
`
`at minimum, justified due process, framing issues and making an appropriate record.
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`G. The Board should deny the motion as being premature and unnecessary.
`Irrespective of the merits of the Motion or of Cellspin’s contravening rights, the
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`Board should deny the motion because it is premature to strike any of Cellspin’s
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`filings until the Board considers all submissions and arguments and prepares a final
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`ruling, as striking matters may inhibit their inclusion in the public and appellate
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`records, and because the Board can sort through what is improperly new without a
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`motion to strike. E.g., Fluke v. Ametek, IPR2016-01428 ( Paper 26) (Aug. 16, 2017);
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`EMC v. Intellectual Ventures, II, IPR2016-01106 (Paper 23) (July 17, 2017); Silicon
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`Labs. v. Cresta Tech., IPR2015-00615 (Paper 26) (PTAB Feb. 29, 2016).
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`H. The Board Should Not Strike the Sur-Reply Due to Spacing/Count Issues.
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`Panasonic’s asserts form over substance. Cellspin’s alleged spacing violations
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`should not be deemed improper; rather, they constitute a matter of style not dictated
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`by Board rules, they do not detract from meaning or readability, and, at worse, they
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`constitute a technical or de minimus violation that should be excused/waived.
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`Panasonic complains that Cellspin did not put spaces after periods, commas and
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`semi-colons in many exhibit citations. Such punctuation has no meaning except to
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`signify separation of textual items, which is clear from the citation style. This is
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`fundamentally a matter of style, wherein spacing after punctation is not required,
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`unless there is a specific requirement, such as from the Chicago Manual of Style.
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`However, the Board has not required following the Chicago Manual or other specific
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`guidelines. Cellspin acknowledges the cited Snap-On decision, which was not
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`published as precedential, and of which Cellspin was unaware. In Snap-On, they
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`omitted spacing after punctuation, and they also omitted periods, which is not
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`relevant here. Snap-On v. Milwaukee Elec., IPR2015-01242 (PTAB Aug. 19, 2016).
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`Due process, including in accordance with the above cases, requires clear rules
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`and fair notice. The requirement in §42.6(a)(2)(ii) for “normal spacing” is not
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`sufficient clarity/notice, especially for the draconian remedy of striking. Further, the
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`Board’s Guide cautions against “deleting spacing between words,” which is different
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`from what occurred. In Snap-On, there was lack of prejudice, also lacking here, and
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`the Board “cautioned” against this in a “future paper.” To the extent Cellspin’s
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`exhibit citation style is improper, at most there should be such cautionary notice.
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`Panasonic also relies upon Pi-Net, an unpublished, non-precedential decision;
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`and an extreme case in which the example was “Thornerv.SonyComputerEntm'tAm.
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`LLC,669F.3d1362,1365(Fed.Cir.2012)” plus “similar matters… throughout.” Pi-
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`Net Intl. v. JPMorgan Chase, 600 F.App’x 774 (Fed. Cir. 2015). Further, instead of
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`submitting a compliant brief as requested, Pi-Net had submitted a brief that
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`“replace[d] various phrases or case citations with abbreviations such as “TOA1” and
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`listed citations only in the table of authorities, which was “poorly explained” and
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`“nearly incomprehensible.” As with Snap-On, notice was provided and an
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`opportunity to avoid the issue going forward was presented, but Pi-Net did not take
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`the opportunity. Typical practice of the Federal Circuit, which apparently occurred
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`at first in Pi-Net, is to require prompt correction of overlong briefs. Panasonic’s
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`Motion asserts, without explanation or support, that adding unspecified spaces
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`would put the Sur-Reply word count at about 400 words over. Cellspin has not been
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`able to reproduce such a high count. In any event, neither Snap-On nor Pi-Net
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`support the extreme and draconian relief requested, especially on these facts.
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`Alternatively, the Board should waive any alleged spacing violation. See Aver Info.
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`v. Pathway Innov. & Techs., IPR2017-02108, Paper 27 (PTAB Nov. 30, 2018).
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`J. Even if the Board Struck Some or All Sur-Reply Evidence, it Would be
`Improper, including Under Due Process, to Strike Any of the Sur-Reply.
`Even if the Board erroneously struck some or all of Cellspin’s Sur-Reply
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`evidence, it would be improper, including a due process and APA violation, to strike
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`any of Cellspin’s Sur-Reply. The due process and APA cases cited above require a
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`fair opportunity to be heard. At worst, Cellspin’s argument could be considered
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`without support of stricken evidence. Further, even if the Board erroneously struck
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`some or all Sur-Reply evidence, the only just and proper remedy, including pursuant
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`to due process and APA rights, would be to permit a prompt, corrected sur-reply,
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`which would not include any new theories, directions, approaches, or arguments,
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`consistent with any ruling granting the motion in whole or part. Belden, 805 F.3d at
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`1079. This would not prejudice Panasonic, yet it would provide a resolution from
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`any granting of the motion with at least minimal fairness and due process.
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`III. Conclusion.
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`Panasonic lacks unfair prejudice and cannot specify anything not rebutting
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`Improper New Matter. Cellspin requests denial of the motion and relief noted herein.
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`Dated: January 3, 2020
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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
`Facsimile: 213-835-6996
`Email: pto-edmonds@ip-lit.com
`
`
`Stephen F. Schlather, Reg. No. 45,081
`EDMONDS & SCHLATHER, PLLC
`2501 Saltus Street
`Houston, TX 77003
`Telephone: 713-234-0044
`Facsimile: 713-224-6651
`Email: sschlather@ip-lit.com
`
`
`
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`Certificate of Service
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`I hereby certify that this Motion is being served on January 3, 2020 by electronic
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`mail and PTAB ECF to the following:
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`vpearce@orrick.com
`TVPPTABDocket@orrick.com
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`Dated: January 3, 2020
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`Jennifer.Bailey@eriseip.com
`Adam.Seitz@eriseip.com
`PTAB@eriseip.com
`karinehk@rimonlaw.com
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`
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`/s/ John J. Edmonds
`John J. Edmonds
`
`Counsel for Patent Owner,
`Cellspin Soft, Inc.
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`16
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