UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Panasonic Corporation and Panasonic Corporation of North America, GoPro, Inc.
`Garmin International, Inc., and Garmin USA, Inc.
`Petitioners,
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`v.
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`Cellspin Soft, Inc.
`Patent Owner.
`
`CASE: IPR2019-001311
`Patent No. 9,258,698
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`PATENT OWNER CELLSPIN’S SUBMISSION ON TIMING AND
`NOTICE OF BASIS FOR RELIEF REQUESTED UNDER 37 C.F.R. §
`42.21 PURSUANT TO THE DECEMBER 4, 2019 ORDER
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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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`IPR2019-00131
`U.S. Pat. No. 9,258,698
`The Timing of Cellspin’s Request to File a Motion to Strike.
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`The Board’s December 4, 2019 Order required Patent Owner Cellspin Soft, Inc.
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`(Cellspin”) to explain the timing of its request to file a motion to strike, in view of the
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`statement in the Consolidated Practice Guide that, “[g]enerally, authorization to file a
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`motion to strike should be requested within one week of the allegedly improper
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`submission.” Consolidated Trial Practice Guide, 81 (November 2019) (“Consolidated
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`Guide”).
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`Cellspin appreciates that the Board generally disfavors motions to strike, including
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`because striking matters may inhibit their inclusion in the public and appellate records,
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`and because the Board has the ability to sort through what is improperly new in a reply
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`filing without needing to address a motion to strike. See, e.g., Silicon Laboratories, Inc.
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`v. Cresta Technology Corp., IPR2015-00615, 00626, Paper 26 (PTAB Feb. 29, 2016)
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`(Denying authorization for Motion to Strike and instead permitting submission of a list
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`of portions in Reply that were improperly new). To this end, the Board’s Practice Guide
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`states that:
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`In most cases, the Board is capable of identifying new issues or belatedly
`presented evidence when weighing the evidence at the close of trial, and
`disregarding any new issues or belatedly presented evidence that exceeds the
`proper scope of reply or sur-reply. As such, striking the entirety or a portion
`of a party’s brief is an exceptional remedy that the Board expects will be
`granted rarely. Thus, in most cases, the Board is capable of identifying new
`issues or belatedly presented evidence when weighing the evidence at the
`close of trial, and disregarding any new issues or belatedly presented evidence
`that exceeds the proper scope of reply or sur-reply.
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`1
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`Consolidated Guide, p. 80.
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`IPR2019-00131
`U.S. Pat. No. 9,258,698
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`Nonetheless, eight days after Cellspin filed its Sur-Reply, Panasonic saw fit to
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`request leave for a motion to strike what it alleges to be improper new matters within
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`and cited by Cellspin’s Sur-Reply. 2 Setting aside the lack of merit in whole or part of
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`such a motion by Panasonic, should the Board entertain Panasonic’s motion, then it
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`should also grant Cellspin leave for a motion to strike indisputably, improperly new
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`matters within and cited by Cellspin’s Sur-Reply. See Intelligent Bio-Systems, Inc. v.
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`Illumina Cambridge Ltd., 821 F.3d 1359, 1369-70 (Fed. Cir. 2016) (Board did not abuse
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`its discretion in refusing to consider reply brief arguments advocating a “new theory” of
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`unpatentability under 37 C.F.R. §42.23(b)); Apple Inc. v. e-Watch, Inc., Case IPR2015-
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`00412, slip op. at 44 (Paper 50) (PTAB May 6, 2016) (“‘Respond,’ in the context of 37
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`C.F.R. §42.23(b), does not mean embark in a new direction with a new approach as
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`compared to the position originally taken in the Petition. Accepting such belatedly
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`presented new arguments would be unjust to the Patent Owner and we decline to do
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`so.”). As noted in the Board’s Practice Guide,
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`Petitioner may not submit new evidence or argument in reply that it could
`have presented earlier, e.g. to make out a prima facie case of unpatentability.
`A party also may submit rebuttal evidence in support of its reply. See Belden
`Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077–78 (Fed. Cir. 2015). If a party
`submits a new expert declaration with its reply, the opposing party may …
`move to exclude the declaration. Id. at 1081−82.3
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`2 The Practice Guide’s statement that ordinarily leave for motions to strike should be requested within
`seven days of the offending paper does not constitute an absolute seven-day deadline for motions to
`strike. If it did, then the Board would presumably refuse leave for both Panasonic and Cellspin, both of
`which requested leave after such a seven-day window had passed.
`3 The Board’s deadline for filing motions to exclude, i.e., January 9, 2020, has not passed. Paper 12, p.
`2
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`Consolidated Guide, p. 73. Panasonic’s Reply constitutes a clear and egregious violation
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`IPR2019-00131
`U.S. Pat. No. 9,258,698
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`of this rule, because everything, or at a minimum substantially everything of substance or
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`consequence, in the Reply or cited by the Reply constitutes new, non-rebuttal matters in
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`reply that Panasonic could have presented earlier, e.g. to make out a prima facie case of
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`unpatentability. Thus, everything of substance in and cited by Cellspin’s Sur-reply was
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`submitted in rebuttal to Panasonic’s improper Reply and improper Reply evidence.
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`At a minimum, due process and fundamental fairness would require striking all, or
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`at least substantially all, of Panasonic’s Reply and the evidences it relied upon, including
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`the wholly improper Strawn Declaration at Ex. 1024. Alternatively, at a minimum, due
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`process and fundamental fairness would require denying any motion to strike brought by
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`Panasonic, including for the foregoing reasons. Thus, the motions to strike sought to be
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`filed by Panasonic and Cellspin are intertwined, including logically and factually, and the
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`Board should consider both sides Motions to Strike if it considers either of them.
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`It would constitute a grave injustice if the Board does not strike or, at a minimum,
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`disregard the new theories asserted in Panasonic’s Reply, which include improperly new
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`obviousness theories, which are beyond dispute new and outside the scope of Cellspin’s
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`Response, including at least the following: (1) that paired wireless connections are
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`obvious in view of Bluetooth; and (2) that a client application composed of multiple
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`modules renders obvious a single client application; and which further includes
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`9.
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`3
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`IPR2019-00131
`U.S. Pat. No. 9,258,698
`improperly new theories of claim limitations being met, namely that (3) Mashita’s
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`references to a PIN are actually references to a passkey; (4) that Mashita’s use of a PIN
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`actually results in actual Bluetooth pairing occurring; that cryptographic authentication
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`is inherent in Bluetooth pairing; (5) that combining Mashita’s Bluetooth connection with
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`the disclosure of the Bluetooth specification meets cryptographic authentication because
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`the Bluetooth specification includes cryptographic algorithms; and (6) Mashita discloses
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`Limitation J, i.e., “wherein the cellular phone is configured to use HTTP to upload the
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`received new-media file along with user information to a user media publishing
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`website.”
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`The improper new matters throughout Panasonic’s Reply and Exhibits are not
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`proper for rebuttal, such matters could have been presented in Panasonic’s Petition, e.g.
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`to make out a prima facie case of unpatentability, and such matters were naturally not
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`addressed or acknowledged in the Board’s Institution Decision.
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`Cellspin’s Sur-Reply and its cited evidence were primarily and substantially
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`devoted to attempting to address improper new evidence and arguments in Panasonic’s
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`Reply that were not proper rebuttal and that Panasonic could have presented earlier, even
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`though Cellspin had inadequate time and briefing space to address them, and even
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`though Cellspin would be grievously unfairly prejudiced if the Board erroneously
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`considered such improperly new matters in and supporting Panasonic’s improper Reply.
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` Thus, it would be a grievous and fundamentally unfair move by the Board to
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`improperly strike Cellspin’s responsive matters in and cited by its Sur-Reply, including
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`IPR2019-00131
`U.S. Pat. No. 9,258,698
`if the Board declined to strike the improperly new assertions in Panasonic’s Reply to
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`which Cellspin was responding. Further, in order to fairly consider any motion to strike
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`brought by Panasonic directed to Cellspin’s Sur-Reply, the Board must give considerable
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`weight to the fact that Cellspin had to include such matters in its Sur-Reply to fairly
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`address the myriad of new matters asserted in Panasonic’s Reply.
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`Further, if the Board strikes the improperly new matters in Panasonic’s Reply,
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`then it will likely moot the need to address many of the matters in Cellspin’s Sur-Reply,
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`because many of the matters in Cellspin’s Sur-Reply are responding to improper new
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`matters in Panasonic’s Reply.
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`II.
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`Specific Relief Requested in Motion to Strike
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`Cellspin requests authorization to file a motion to strike Panasonic’s Reply in its
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`entirety and accompanying Exhibits 1024 and 1026-1031.2 In the alternative, the motion
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`will request that the Board strike those seven exhibits and accord no weight to arguments
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`in the Reply based on said exhibits. In the alternative, the Motion will request the Board
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`to strike, or alternatively give no weight to, at a minimum the matters listed and set forth
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`in detail in Cellspin’s previously filed Objections at Paper 25.
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`III. Bases for the Requested Relief
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`The Reply and the seven exhibits: (1) violate the PTAB’s Consolidated Trial
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`Practice Guide, November 2019’s (“Consolidated Guide”) proscription against
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`submitting new evidence with a reply; and (2) thus, unfairly prejudice Cellspin.
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`5
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`IPR2019-00131
`U.S. Pat. No. 9,258,698
`As already noted above, the improper new matters throughout Panasonic’s Reply
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`and Exhibits are not proper rebuttal, such matters could have been presented in
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`Panasonic’s Petition, e.g. to make out a prima facie case of unpatentability, and such
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`matters were naturally not addressed or acknowledged in the Board’s Institution
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`Decision.
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` As noted in the Board’s Practice Guide,
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`Petitioner may not submit new evidence or argument in reply that it could
`have presented earlier, e.g. to make out a prima facie case of unpatentability.
`A party also may submit rebuttal evidence in support of its reply. See Belden
`Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1077–78 (Fed. Cir. 2015). If a party
`submits a new expert declaration with its reply, the opposing party may …
`move to exclude the declaration. Id. at 1081−82.4
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`Consolidated Guide, p. 73. Panasonic’s Reply constitutes a clear and egregious violation
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`of this rule, because everything, or at a minimum substantially everything of substance or
`
`consequence, in the Reply or cited by the Reply constitutes new, non-rebuttal matters in
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`in reply that Panasonic could have presented earlier, e.g. to make out a prima facie case
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`of unpatentability.
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`
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`At a minimum, due process and fundamental fairness would require striking all, or
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`at least substantially all, of Panasonic’s Reply and the evidences it relied upon, including
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`the wholly improper Strawn Declaration at Ex. 1024.
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`
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`It would constitute a grave injustice if the Board does not strike, or at a minimum,
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`4 The Board’s deadline for filing motions to exclude, i.e., January 9, 2020, has not passed. Paper 12, p.
`9.
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`6
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`IPR2019-00131
`U.S. Pat. No. 9,258,698
`disregard the new theories asserted in Panasonic’s Reply, which include improperly new
`
`obviousness theories, which are beyond dispute new and outside the scope of Cellspin’s
`
`Response, including at least the following: (1) that paired wireless connections are
`
`obvious in view of Bluetooth; and (2) that a client application composed of multiple
`
`modules renders obvious a single client application; and which further includes
`
`improperly new theories of claim limitations being met, including that (3) Mashita’s
`
`references to a PIN are actually references to a passkey; (4) that Mashita’s use of a PIN
`
`actually results in actual Bluetooth pairing occurring; that cryptographic authentication
`
`is inherent in Bluetooth pairing; (5) that combining Mashita’s Bluetooth connection with
`
`the disclosure of the Bluetooth specification meets cryptographic authentication because
`
`the Bluetooth specification includes cryptographic algorithms; and (6) Mashita discloses
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`Limitation J, i.e., “wherein the cellular phone is configured to use HTTP to upload the
`
`received new-media file along with user information to a user media publishing
`
`website.”
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`Panasonic’s Reply and evidence far beyond proper rebuttal unfairly prejudices
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`Cellspin because Panasonic should have included such matters in its Petition, a sur-reply
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`is a poor vehicle for attempting to address such improper Reply matters, and Cellspin
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`lacked a fair opportunity, time-wise, space-wise or procedurally, to properly rebut
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`Panasonic’s improper new evidence and arguments. See Apple, Case IPR2015-00412,
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`slip op. at 44 (“Accepting such belatedly presented new arguments would be unjust to
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`the Patent Owner and we decline to do so.”). Panasonic should not be allowed a second
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`IPR2019-00131
`U.S. Pat. No. 9,258,698
`and much belated bite at the apple in an effort to avoid the consequences of its chosen
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`grounds for institution.
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`Finally, the new expert declaration at Ex. 1024 is the backbone of
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`Panasonic’s. Panasonic’s Reply repeats and cites to the declaration extensively
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`throughout. Thus, the Reply should be stricken as well. See Consolidated Guide, p.
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`74 (“The Board is not required to attempt to sort proper from improper portions of
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`the reply or sur- reply.”) Alternatively, the Board could strike the exhibits and treat
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`the statements in the Reply citing to those exhibits as unsupported attorney
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`argument.
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`Dated: December 9, 2019
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`Respectfully submitted,
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`
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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
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`Counsel for Patent Owner, Cellspin Soft, Inc.
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`CERTIFICATE OF SERVICE
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`IPR2019-00131
`U.S. Pat. No. 9,258,698
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`The undersigned hereby certifies that a copy of the foregoing PATENT
`OWNER CELLSPIN’S SUBMISSION ON TIMING AND NOTICE OF
`BASIS FOR RELIEF REQUESTED UNDER 37 C.F.R. § 42.21
`PURSUANT TO THE DECEMBER 4, 2019 ORDER was served in its
`entirety on December 9, 2019, 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.
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`T. Vann Pearce, Jr.
`Orrick, Herrington & Sutcliffe, LLP
`1152 15th Street, N.W.
`Washington, D.C. 20005-1706
`vpearce@orrick.com
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`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
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`/s/ John J. Edmonds
`John J. Edmonds
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`9
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