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`Trials@uspto.gov
`571-272-7822
`
` Paper 8
`
`
`
`Entered: February 25, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`PANASONIC CORPORATION and
`PANASONIC CORPORATION OF NORTH AMERICA,
`Petitioner,
`
`v.
`
`CELLSPIN SOFT, INC.,
`Patent Owner.
`
`
`
`
`Case IPR2019-00131
`Patent 9,258,698 B2
`
`
`
`
`Before GREGG I. ANDERSON, DANIEL J. GALLIGAN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.108(c)
`
`
`
`Case IPR2019-00131
`Patent No. 9,258,698
`
`
`INTRODUCTION
`A telephone conference call in the above captioned case was held on
`February 25, 2019. Counsel for Panasonic Corporation and Panasonic
`Corporation of North America (“Petitioner”), counsel for Cellspin Soft, Inc.
`(“Patent Owner”), and Judges Anderson, Galligan, and Margolies
`participated. Petitioner retained a court reporter who transcribed the call.
`The call was held at the request of Petitioner. See Ex. 3001 (email
`dated February 14, 2019). Petitioner sought authorization to file a reply
`brief to the Patent Owner’s Preliminary Response (“Prelim. Resp.,”
`Paper 7). In its Preliminary Response, Patent Owner argues that all of the
`challenged claims “have been held unpatentable” by a district court and
`“[b]ecause the Petition was filed on an already invalidated patent,
`Petitioner fails to show . . . standing for institution.” Prelim. Resp. 42. If
`authorized, Petitioner represented “the reply would be limited to addressing
`the lack of standing argument.” Ex. 3001. Patent Owner is appealing the
`district court decision to the Federal Circuit. Id. (citing Prelim. Resp. 42).
`The parties reported that oral argument on the appeal to the Federal Circuit
`will be held on April 5, 2019.
`DISCUSSION
`On the call, Petitioner argued that the standing issue is a legal issue
`and that the authority cited in the Preliminary Response does not support
`denial of the Petition for inter partes review. Patent Owner opposed
`authorizing a reply, arguing that Petitioner has been on notice of the
`standing issue and has not shown good cause.
`Patent Owner has not identified any prejudice to it in allowing the
`relief requested. A decision on institution is not due until April 30, 2019.
`
`
`
`Case IPR2019-00131
`Patent No. 9,258,698
`
`Patent Owner’s entire argument on the standing issue is less than a page in
`length. See Prelim. Resp. 42. The status of the appeal of the district court
`ruling may impact the course of this proceeding.
`On the call, Petitioner requested it be authorized to file a three page
`reply. Petitioner also confirmed that the reply could be filed on or before
`March 4, 2019. Because of the narrow issue presented and the brevity and
`timing of the reply, this proceeding will not be unduly delayed.
`Under the circumstances presented here, we authorize the filing of a
`reply to the standing issue. See 37 C.F.R. § 42.108(c).
`
`
`
`
`
`
`
`
`3
`
`
`
`Case IPR2019-00131
`Patent No. 9,258,698
`
`
`ORDER
`
`It is
`ORDERED that on or before March 4, 2019, Petitioner may file a reply
`to the Preliminary Response limited to the issue of standing as set forth at
`page 42 of the Preliminary Response;
`FURTHER ORDERED that the Reply will be limited to three (3)
`pages, and no new evidence shall be introduced;
`FURTHER ORDERED that no sur-reply is authorized at this time;
`FURTHER ORDERED that Petitioner will file the transcript of the call
`as an exhibit in this case; and
`FURTHER ORDERED that the parties will inform the Board of any
`further developments in the appeal to the Federal Circuit.
`
`
`
`PETITIONER:
`
`Timothy Pearce
`Christopher Higgins
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`tvpptabdocket@orrick.com
` ochptabdocket@orrick.com
`
`
`
`PATENT OWNER:
`
`John Edmonds
`Eric Carr
`COLLINS EDMONDS & SCHLATHER, PLLC
`Pto-edmonds@ip-lit.com
`ecarr@ip-lit.com
`
`
`
`4
`
`
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