UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Panasonic Corporation of North America et al.
`Petitioners
`
`v.
`
`Cellspin Soft, Inc.
`Patent Owner
`
`CASE: IPR2019-00131
`Patent No. 9,258,698
`
`PETITIONERS’ REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Panasonic Corporation of North America et al.
`Petitioners
`
`v.
`
`Cellspin Soft, Inc.
`Patent Owner
`
`CASE: IPR2019-00131
`Patent No. 9,258,698
`
`PETITIONERS’ REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE
`
`
`
`Case No. IPR2019-00131
`Patent No. 9,258,698
`
`PETITIONER’S EXHIBIT LIST
`Ex. 1001 Declaration of Dr. John Strawn
`
`Ex. 1002 Curriculum Vitae of Dr. John Strawn
`
`Ex. 1003 United States Patent No. 9,258,698 to Gurvinder Singh, et al. (“the
`’698 Patent”)
`
`Ex. 1004
`
`Patent File History for the ’698 Patent
`
`Ex. 1005
`
`Japanese Patent Application Publication No. 2003-51772, identifying
`Hiroshi Mashita as inventor (“Mashita”)
`
`Ex. 1006 Certified translation of Mashita
`
`Ex. 1007
`
`Japanese Patent Application Publication No. 2003-299014, identifying
`Jiro Onishi et al. as inventors (“Onishi”)
`
`Ex. 1008 Certified translation of Onishi
`
`Ex. 1009
`
`Japanese Patent Application Publication No. 2004-102810, identifying
`Tomonobu Hiraishi as inventor (“Hiraishi”)
`
`Ex. 1010 Certified translation of Hiraishi
`
`Ex. 1011 United States Patent No. 8,738,794 to Gurvinder Singh, et al. (“the
`’794 Patent”)
`
`Ex. 1012
`
`Ex. 1013
`
`Excerpts from Mc-Graw Hill Dictionary of Computing &
`Communications, Copyright 2003
`
`Excerpts from Wiley Electrical and Electronics Engineering
`Dictionary, Copyright 2004
`
`Ex. 1014 User guide for Sony Ericsson Z520a, Copyright 2005
`
`Ex. 1015 Cingular Wireless Service Agreement of 22 March, 2006
`
`Ex. 1016 User’s Guide for Nokia N73, Copyright 2006
`ii
`
`
`
`Case No. IPR2019-00131
`Patent No. 9,258,698
`Ex. 1017
`Excerpts from Specification of the Bluetooth System, Dated 4
`November 2004
`
`Ex. 1018 Receipt for purchase of Sony Ericsson Z520a, dated December 20,
`2005
`
`Ex. 1019 Amended Complaint dated March 2, 2018, Cellspin Soft, Inc. v.
`Panasonic Corporation of North America, Case No. 4:17-cv-05941,
`United States District Court for the Northern District of California
`
`Ex. 1020
`
`Ex. 1021
`
`Bluetooth Basic Imaging Profile, Interoperability Specification, Dated
`July 30, 2003
`
`“IMT-2000,” published by the National Telecommunications and
`Information Administration, United States Department of Commerce,
`August 2000
`
`Ex. 1022
`
`Transcript of Oral Argument held February 25, 2019 in IPR2019-
`00131
`
`iii
`
`
`
`Case No. IPR2019-00131
`Patent No. 9,258,698
`As authorized by the Board (Paper 8), Petitioners submit this Reply to
`
`address Patent Owner’s argument that the Petition “fails to show sufficient grounds
`
`or standing for institution.” Prelim. Resp. (Paper 7) at 42. Patent Owner’s
`
`argument is legally incorrect, and the Petition does show standing, for four reasons.
`
`First, according to the Board’s regulations a petition has standing on its face
`
`when it certifies compliance with 37 C.F.R. § 42.104(a). The Petition here does
`
`(Pet. at 6) and Patent Owner has not challenged this certification.
`
`Second, nothing in the statutes governing the IPR process, 35 U.S.C. §§ 311-
`
`319, nor the Board’s regulations, 37 C.F.R. §§ 42.100-123, states or suggests that
`
`rulings in active co-pending litigation could deprive the petitioner of standing.
`
`Third, none of Patent Owner’s cited authorities support its lack of standing
`
`argument. The five decisions Patent Owner cites all share one salient
`
`characteristic: they involved patent claims that could never be asserted again,
`
`because either the patent owner had cancelled the claims or there had been a final
`
`ruling of invalidity through all appeals. In contrast, the pending litigation
`
`involving the Challenged Claims here remains on appeal.
`
`In Unified Patent v. Digital Audio Encoding Sys., IPR2017-00208 (March
`
`13, 2017), the patent owner filed a statutory disclaimer of all claims of the patent at
`
`issue, which “effectively eliminated those claims.” 2017 WL 1014400, *1-2. The
`
`Board thus denied the IPR petition “as moot.” Id. Pfizer, Inc. v. Genentech, Inc.,
`1
`
`
`
`Case No. IPR2019-00131
`Patent No. 9,258,698
`IPR2017-01726 (Jan. 23, 2018) and Luxottica Retail N. Am. Inc. v. Lennon Image
`
`Techs., LLC, IPR2014-00593 (Oct. 10, 2014) are similar: the patent owners had
`
`cancelled claims in a co-pending IPR or ex parte reexamination, thus the Board
`
`found the petitions “moot” as to those claims. 2018 WL 539352, *2-3 (noting that
`
`the “challenged claims no longer exist)”; 2014 WL 5221330, *2.
`
`Semiconductor Components Indus. v. Power Integrations, Inc., IPR2016-
`
`01600 (Feb. 14, 2018) involved co-pending federal court litigation. The Federal
`
`Circuit had held that two claims of the patent at issue were invalid, and the patent
`
`owner did not seek Supreme Court review. 2018 WL 930833, *2. The Board
`
`agreed that “a final judgment of invalidity by the Federal Circuit is binding on the
`
`USPTO” (Id., *4), quoting Manual of Patent Examining Procedure § 2286 (“A
`
`final holding of claim invalidity or unenforceability (after all appeals) ... is
`
`controlling on the Office.”)
`
`Finally, Patent Owner cites in bulk five pages from a dissent from a denial of
`
`rehearing en banc; the relevance of this citation is unclear. See Fresenius USA,
`
`Inc. v. Baxter Intern., Inc., 733 F.3d 1369, 1373-77 (Fed. Cir. 2013). In any event,
`
`in Fresenius too there was a Federal Circuit ruling upholding the Patent Office’s
`
`cancellation of claims; Fresenius concerned the preclusive effect of that ruling on
`
`pending district court litigation. See id. at 1373-75.
`
`2
`
`
`
`Case No. IPR2019-00131
`Patent No. 9,258,698
`The crucial difference between this Petition and Patent Owner’s cited
`
`authorities is that co-pending proceedings have not mooted any aspect of the
`
`Petition. Patent Owner is appealing the district court’s ruling of unpatentability.
`
`Prelim. Resp. at 42. If the appeal succeeds, then the case will be remanded for
`
`Patent Owner to continue asserting the Challenged Claims. Indeed, Patent Owner
`
`complains that Petitioners filed the Petition for “leverage” in the litigation. Id. at 1.
`
`While this speculation about Petitioners’ motives is both baseless and irrelevant to
`
`whether the Board should institute, it does undermine the lack of standing
`
`argument: Petitioners would get no “leverage” from filing a moot Petition.
`
`Fourth, the MPEP provides that “[a] non-final holding of claim invalidity or
`
`unenforceability will not be controlling” on whether to institute an ex parte
`
`reexamination nor will it be binding on a pending EPR; this is contrasted with a
`
`final federal court holding of invalidity “after all appeals” which is binding.
`
`MPEP, § 2286 (emphasis in original). Although these provisions concern EPRs,
`
`there is no reason why IPRs should be treated differently, and indeed the Board
`
`previously cited with approval this MPEP section in Semiconductor Components
`
`discussed above. See also MPEP § 2686.04 (the same provisions governed prior
`
`inter partes reexamination proceedings). The rationale is even stronger here,
`
`because the district court’s ruling was based on 35 U.S.C. § 101 rather than
`
`grounds that are or could have been raised in the Petition.
`3
`
`
`
`Case No. IPR2019-00131
`Patent No. 9,258,698
`Dated: March 4, 2019
`
`Respectfully submitted,
`
`By: / T. Vann Pearce, Jr. /
`
`T. Vann Pearce, Jr.
`Lead Counsel for Petitioners Panasonic
`Corporation of North America and
`Panasonic Corporation
`
`4
`
`
`
`Case No. IPR2019-00131
`Patent No. 9,258,698
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Petitioners’
`
`Reply to Patent Owner’s Preliminary Response was served on March 4,2019 via
`
`electronic service:
`
`John J. Edmonds
`Collins Edmonds Schlather & Tower, PLLC
`355 S. Grand Avenue, Suite 2450
`Los Angeles, CA 90071
`
`Eric R. Carr
`Collins Edmonds Schlather & Tower, PLLC
`1616 S. Voss Road, Suite 125
`Houston, TX 77057
`
`Email: pto-edmonds@ip-lit.com
`
`Email: ecarr@ip-lit.com
`
`/ T. Vann Pearce, Jr. /
`
`5
`
`
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