UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`PANASONIC CORPORATION AND PANASONIC CORPORATION OF NORTH
`AMERICA
`Petitioners,
`
`v.
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`CELLSPIN SOFT, INC.
`Patent Owner.
`
`CASE: IPR2019-001311
`Patent No. 9,258,698
`
`PATENT OWNER CELLSPIN’S OBJECTIONS TO PETITIONER’S
`DEMONSTRATIVE EXHIBITS
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`1 GoPro, Inc., Garmin International, Inc. and Garmin USA, Inc. were joined as
`parties to this proceeding. Paper 29.
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`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 OBJECTIONS TO PETITIONER’S
`DEMONSTRATIVE EXHIBITS
`
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`1 GoPro, Inc., Garmin International, Inc. and Garmin USA, Inc. were joined as
`parties to this proceeding. Paper 29.
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`I.
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`Introduction
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`IPR2019-00131
`U.S. Pat. No. 9,258,698
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`Petitioner Panasonic’s proposed demonstrative slides, like Panasonic’s Reply and
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`its Exhibits, are rife with improper new theories, directions, approaches, arguments and
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`evidence which are not proper rebuttal and which Panasonic could, and should, have
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`presented in its prima facie case in its Petition (collectively the “Improper New
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`Matters”). Such Improper New Matters violate 37 C.F.R. §42.23(b), the Administrative
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`Procedure Act (“APA”) and due process. See Genzyme v. Biomarin Pharm., 825 F.3d
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`1360, 1365-66 (Fed. Cir. 2016); Intelligent Bio-Sys. v. Illumina Cambridge, 821 F.3d
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`1359, 1369-70 (Fed. Cir. 2016); In re NuVasive, 841 F.3d 966, 973 (Fed. Cir. 2016);
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`Belden v. Berk-Tek, 805 F.3d 1064, 1078, 1081 (Fed. Cir. 2015); Apple v. e-Watch,
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`IPR2015-00412 (Paper 50, p. 44) (PTAB May 6, 2016); See Consolidated Guide, pp. 73
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`& 80-81. See also 5 U.S.C. §§ 554(b)-(c), 556(d), 557(c); Abbott Labs. v. Cordis, 710
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`F.3d 1318, 1328 (Fed. Cir. 2013). See also Cellspin’s December 23, 2019 Motion to
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`Strike (“MTS”) and Cellspin’s January 13, 2020 Response to Panasonic’s Motion to
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`Strike (Paper 48). The PTAB should strike, or alternatively, exclude, Panasonic’s
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`improper demonstratives, which were submitted as a whole, in their entirety. See CBS
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`Interactive v. Helferich Patent Licensing, IPR2013-00033, Paper 118 (Oct. 23, 2013).
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`Alternatively, the PTAB should strike, or alternatively, exclude, the individual slides 12,
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`16, 18, 29, 31-32, 34, and 36-39, including for the reasons noted herein. To the extent
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`necessary or appropriate, the MTS should be deemed incorporated herein as applicable
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`1
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`to many of these same issues.
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`II. Argument.
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`A. Objections to Slide 12
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`IPR2019-00131
`U.S. Pat. No. 9,258,698
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`Cellspin objects to Slide 12 because the Panasonic’s stated arguments that
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`“Mashita discloses the same pairing and cryptographic authentication process as the '698
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`patent itself and as taught in the Bluetooth specifications,” and that “Limitation [C] would
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`have been an obvious implementation of the Bluetooth connections disclosed in the three
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`prior art references,” are Improper New Matters.
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`Panasonic’s Petition theories for “paired” being met were (a) that Mashita’s
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`connection authenticated with its 4 digit pin was a paired connection; and (b) that
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`Mashita disclosed a Bluetooth connection and that was sufficient to disclose “paired.”.
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`Petition (Paper 1) (“Pet.”), pp. 38-39. Panasonic’s Petition theories for paired were not
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`dependent upon any obviousness theory. Panasonic’s Petition theory for cryptographic
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`authentication being met by Mashita was that Mashita’s PIN exchange constituted
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`cryptographic authentication because the PIN was “secret.” Pet, pp. 39-41. Further,
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`Panasonic’s Petition theories for paired wireless connection and for cryptographically
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`authenticating were not dependent upon the details of the Bluetooth Specification beyond
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`its mere inclusion of pairing and cryptographic authentication.
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`Panasonic’s Petition only
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`relied upon Mashita’s PIN exchange
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`for
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`“cryptographically authenticating” because the PIN was a “secret.” E.g., Pet, pp. 9, 40.
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`Panasonic’s Petition did not rely upon Mashita’s PIN entry for pairing. It only relied upon
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`IPR2019-00131
`U.S. Pat. No. 9,258,698
`the PIN for “cryptographically authenticating” because the PIN was a secret. E.g., Pet, p.
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`40.
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`Panasonic’s new arguments in Slide 12, which are quoted above, are Improper New
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`Matters. See above and Cellspin’s MTS, §§ A, C-H.
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`C. Objections to Slides 16-18
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`Cellspin objects to Slides 16-18 including because the theory/argument/
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`position/assertion that, “Bluetooth Core Specification Confirms Mashita's Disclosure of
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`Paired Connection Using a PIN” constitutes Improper New Matters. Without limitation,
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`Panasonic’s Petition theories for “paired” being met were (a) that Mashita’s connection
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`authenticated with its 4 digit pin was a paired connection; and (b) that Mashita disclosed
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`a Bluetooth connection and that was sufficient to disclose “paired.”. Petition (Paper 1)
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`(“Pet.”), pp. 38-39. This involves similar issues as with Slide 12. See Objections to
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`“paired” Improper New Matters in Slide 12 supra; Cellspin’s MTS, §§ D-G.
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`Cellspin further objects to Slide 17 because “Ex . 1017 at 29 “ is clearly being used
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`to support the foregoing Improper New theory/argument/position/ assertion that,
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`“Bluetooth Core Specification Confirms Mashita's Disclosure of Paired Connection
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`Using a PIN,” and because the citation to Section 4.2.2 of the Bluetooth Specification,
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`which was not cited in Panasonic’s Petition, is Improper New evidence offered in support
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`the foregoing Improper New theory/ argument/position/ assertion. During the meet and
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`confer process, Panasonic pointed out that its Petition at p. 41 states as follows:
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`The Bluetooth specification V2.0 released in November 2004 discloses how
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`IPR2019-00131
`U.S. Pat. No. 9,258,698
`two devices establish a paired Bluetooth connection and cryptographically
`authenticate each other. Ex. 1017, pp. 27, 29 (Section 4.2), 50-51 (Section
`3.2) Ex. 1001, ¶87. Thus, by explicitly disclosing a Bluetooth connection,
`Mashita, Onishi, and Hiraishi, each reference discloses or at least renders
`obvious to a POSITA the “cryptographically authenticating” portion of this
`limitation.
`Pet., p. 41. However, this is just a general assertion Mashita disclosed a Bluetooth
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`connection and that was sufficient to disclose “paired.” Panasonic’s Slide 17 improperly
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`seeks to rely upon new details from the Bluetooth Specification, including those
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`highlighted in the slide concerning a Bluetooth PIN, random number and BD_ADDR,
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`that were not part of Panasonic’s Petition theory or support.
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`Cellspin further objects to Slide 18 because “Ex . 2018 at 866” is clearly being used
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`to support the foregoing Improper New theory/argument/position/ assertion that,
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`“Bluetooth Core Specification Confirms Mashita's Disclosure of Paired Connection
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`Using a PIN,” and because the citation to Figs. 3.1 and 3.10 of the Bluetooth Specification
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`(Ex. 2018), which was not cited in Panasonic’s Petition, are Improper New evidence
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`offered in support the foregoing Improper New theory/argument/position/ assertion.
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`C. Objections to Slides 29, 31-32 and 34
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`Cellspin objects
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`to Slides 29, 31-32 and 34
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`including because
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`the
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`theory/argument/position/assertion in each that, “Mashita Discloses Cryptographic
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`Authentication under the Proper Claim Construction” constitutes Improper New Matters,
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`including Improper New theories/arguments/ positions/assertions for “cryptographically
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`IPR2019-00131
`U.S. Pat. No. 9,258,698
`authenticating” being met and improper new evidence in support thereof. See Objections
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`to “cryptographically authenticating” Improper New Matters at Slide 12 supra. Without
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`limitation, this improper new theory/argument/position/assertion relies upon Improper
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`New details from the Bluetooth specification and upon the Improper New theory/
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`argument/position/assertion the Mashita’s 4 digit PIN is a Bluetooth PIN used for
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`Bluetooth cryptographic authentication, as contrasted with Panasonic’s Petition theories
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`noted supra. See MTS, §§ E-G.
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`Cellspin further objects to Slide 29 because Ex. 1001 at ¶ 87 is being used to
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`support the Improper New theory that “Mashita Discloses Cryptographic Authentication
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`under the Proper Claim Construction,” and because was Ex. 1001 at ¶ 87 only cited in
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`Panasonic’s Petition, at pp. 40-41, for the general proposition that the Bluetooth
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`Specification disclosed pairing. The details noted in Slide 29 were not cited in
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`Panasonic’s Petition. Further, this was only cited in the Strawn Declaration, Ex. 1001 at
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`¶ 87, for the general proposition that Bluetooth disclosed cryptographic authentication.
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`Panasonic’s Slide 29 improperly seeks to rely upon details from the Bluetooth
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`Specification, including those highlighted in the slide, concerning a Link Layer and PIN
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`plus random number plus BD-ADDR, that were not part of Panasonic’s Petition theory
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`or support, to support its Improper New theories noted above. See MTS, §§III.E-G.
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`Cellspin further objects to Slide 31 because Ex. 1017 at 51 is being used to support
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`the Improper New theory that “Mashita Discloses Cryptographic Authentication under
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`the Proper Claim Construction,” and because Ex. 1017 at 51 was only cited in Panasonic’s
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`IPR2019-00131
`U.S. Pat. No. 9,258,698
`Petition, at p. 41, for the general proposition that the Bluetooth Specification disclosed
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`pairing. The details noted in Slide 31 were not cited in Panasonic’s Petition. Further,
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`this was only cited in the Strawn Declaration, Ex. 1001 at ¶ 87, for the general proposition
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`that Bluetooth disclosed cryptographic authentication. Panasonic’s Slide 31 improperly
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`seeks to rely upon details from the Bluetooth Specification, including those highlighted
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`in the slide, , to support its Improper New theories noted above. See MTS, §§III.E-G.
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`Cellspin further objects to Slide 32 because “Ex. 2018 at 1055-57” is being used to
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`support the Improper New theory that “Mashita Discloses Cryptographic Authentication
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`under the Proper Claim Construction,” and because Ex. 2018 was note cited in
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`Panasonic’s Petition or in the Strawn Petition Declaration at Ex. 1001.
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`Cellspin further objects to Slide 34 because “Ex. 1023 at 42:25-43:6” is being used
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`to support
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`the Improper New
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`theory
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`that “Mashita Discloses Cryptographic
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`Authentication under the Proper Claim Construction,” and because Ex. 2018 was not cited
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`in Panasonic’s Petition or in the Strawn Petition Declaration at Ex. 1001.
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`D. Objections to Slides 36 and 38
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`Cellspin objects
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`to Slides 36 and 38 because
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`the
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`theory/argument/
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`position/assertion in each that, “BIP Teaches that a Paired Connection is Suitable for
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`Image Transfer” constitutes Improper New Matters,
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`including
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`improper new
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`theories/arguments/ positions/assertions for paired wireless connection being obvious and
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`improper new evidence in support thereof. See Objections to “paired” Improper New
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`Matters at Slide 12 supra; Cellspin’s MTS §III.A.
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`IPR2019-00131
`U.S. Pat. No. 9,258,698
`Ex. 1020 was not cited in support of any obvious argument in Panasonic’s Petition
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`(p. 25) or in the Strawn Petition Declaration (¶ 80). Further, neither “Ex 1020 at 16”
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`noted in Slide 36 nor the quoted language from Ex 1020 at 16 in Slide 36 were contained
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`in either Panasonic’s Petition or the Strawn Petition Declaration at Ex. 1001.
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`All citations to Ex. 1020 in Panasonic’s Reply are in support of its Improper New
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`obviousness theory for paired. Reply, pp. 2, 20.
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`Cellspin further objects to Slide 38 because the cited text from the Foley Deposition
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`at Ex. 1023 is an improper attempt by Panasonic to assert Improper New Matters, namely
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`its new obviousness theory for “paired wireless connection” by slipping it in during Dr.
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`Foley’s deposition, when Panasonic was supposed to be asking Dr. Foley about his
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`opinions in Ex. 2009, not posing questions to get sound bites for a new obviousness theory
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`that Panasonic had formulated post-Petition. Further, Ex 1023 at 41:24-42:12 was not
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`cited in either Panasonic’s Petition, Strawn Petition Declaration at Ex. 1001 or even in
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`Panasonic’s Reply or the Strawn Reply Declaration at Ex. 1024. Thus, Panasonic is
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`improperly offering this evidence for the first time in its demonstrative slide. This is
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`clearly improper. See Consolidated Guide, p. 84; Dell v. Acceleron, 884 F.3d 1364, 1369
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`(Fed. Cir. 2018). Further, Panasonic’s only possible purpose for offering these excerpts
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`would be in support of its Improper New obviousness theory for paired. See Objections
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`to Slide 12, supra and MTS, §III.A.
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`E. Cellspin’s Objections to Slides 37 and 39
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`Cellspin objects
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`to Slides 37 and 39 because
`7
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`the
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`theory/argument/
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`IPR2019-00131
`U.S. Pat. No. 9,258,698
`position/assertion in each that, “A Paired … Connection would have been Obvious to a
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`POSITA”
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`constitutes
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`Improper New Matters,
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`including
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`improper
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`new
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`theories/arguments/ positions/assertions for paired wireless connection being obvious and
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`improper new evidence in support thereof. See Objections to “paired” Improper New
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`Matters at Slide 12 supra; Cellspin’s MTS §III.A. Cellspin further objects to Slides 37
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`and 39 because the cited text from the Foley Deposition at Ex. 1023 is an improper
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`attempt by Panasonic to assert Improper New Matters, namely its new obviousness theory
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`for “paired wireless connection” by slipping it in during Dr. Foley’s deposition, when
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`Panasonic was supposed to be asking Dr. Foley about his opinions in Ex. 2009, not posing
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`questions to get sound bites for a new obviousness theory that Panasonic had formulated
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`post-Petition. Further, there were no citations from Ex. 1023 in either Panasonic’s
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`Petition or the Strawn Petition Declaration at Ex. 1001. The Citations to Ex. 1023, 47:1-
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`20 and “Ex 1023 at 44:14-18, 20-45:1; 45:25-46:3” in Panasonic’s Reply is only in
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`support of its Improper New obviousness theory for paired.
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`III. Conclusion.
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`For the foregoing reasons and also the reasons noted in Cellspin’s Motion to Strike,
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`the PTAB should strike, or alternatively, exclude, Panasonic’s improper demonstratives,
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`which were submitted as a whole, in their entirety. Alternatively, the PTAB should strike,
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`or alternatively, exclude, individual slides 12, 16, 18, 29, 31-32, 34, and 36-39.
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`Dated: January 21, 2020
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`Respectfully submitted,
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`IPR2019-00131
`U.S. Pat. No. 9,258,698
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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
`P: 713-234-0044
`F: 713-224-6651
`E: sschlather@ip-lit.com
`
`Counsel for Patent Owner, Cellspin Soft, Inc.
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`IPR2019-00131
`U.S. Pat. No. 9,258,698
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing
`OBJECTIONS was served in its entirety on January 21, 2020, upon the
`following parties via electronic service:
`
`David T. Xue
`Karineh Khachatourian
`Rimon Law
`2479 East Bayshore Road, Suite 210
`Palo Alto, CA 94303
`david.xue@rimonlaw.com
`karinehk@rimonlaw.com
`
`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.
`
`T. Vann Pearce, Jr.
`Orrick, Herrington & Sutcliffe, LLP
`1152 15th Street, N.W.
`Washington, D.C. 20005-1706
`vpearce@orrick.com
`
`David R. Medina
`Orrick, Herrington & Sutcliffe, LLP
`1000 Marsh Road
`Menlo Park, CA 94025
`dmedina@orrick.com
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`Attorneys for Petitioners Panasonic Corporation of North America and
`Panasonic Corporation
`
`/s/ John J. Edmonds
`John J. Edmonds
`
`10
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