UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Panasonic Corporation and Panasonic Corporation of North America, GoPro, Inc.
`Garmin International, Inc., and Garmin USA, Inc.
`Petitioners,
`
`v.
`
`Cellspin Soft, Inc.
`Patent Owner.
`
`CASE: IPR2019-001311
`Patent No. 9,258,698
`
`PETITIONERS PANASONIC CORPORATION AND PANASONIC
`
`CORPORATION OF NORTH AMERICA’S NOTICE OF BASIS FOR
`
`RELIEF REQUESTED UNDER 37 C.F.R. § 42.21 PURSUSANT TO THE
`
`DECEMBER 4, 2019 ORDER
`
`1 GoPro, Inc., Garmin International, Inc. and Garmin USA, Inc. were joined as
`parties to this proceeding. Paper 29.
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Panasonic Corporation and Panasonic Corporation of North America, GoPro, Inc.
`Garmin International, Inc., and Garmin USA, Inc.
`Petitioners,
`
`v.
`
`Cellspin Soft, Inc.
`Patent Owner.
`
`CASE: IPR2019-001311
`Patent No. 9,258,698
`
`PETITIONERS PANASONIC CORPORATION AND PANASONIC
`
`CORPORATION OF NORTH AMERICA’S NOTICE OF BASIS FOR
`
`RELIEF REQUESTED UNDER 37 C.F.R. § 42.21 PURSUSANT TO THE
`
`DECEMBER 4, 2019 ORDER
`
`1 GoPro, Inc., Garmin International, Inc. and Garmin USA, Inc. were joined as
`parties to this proceeding. Paper 29.
`
`
`
`I.
`
`Specific Relief Requested
`
`Panasonic requests authorization to file a motion to strike Patent Owner’s
`
`sur-reply in its entirety and accompanying Exhibits 2026-2029 and 2031-33. 2 In
`
`the alternative, the motion will request that the Board strike those seven Exhibits
`
`and accord no weight to the sur-reply arguments based on the Exhibits.
`
`II. Bases for the Requested Relief
`
`The sur-reply and the seven exhibits: (1) violate the PTAB’s Consolidated
`
`Trial Practice Guide, November 2019’s (“Consolidated Guide”) proscription
`
`against submitting new evidence with a sur-reply; (2) unfairly prejudice Panasonic,
`
`and (3) attempt to circumvent the word limit for sur-replies.
`
`First, Cellspin was expressly prohibited from introducing new evidence on
`
`sur-reply. Consolidated Guide, p. 73 (“The sur-reply may not be accompanied by
`
`new evidence other than deposition transcripts of the cross-examination of any
`
`reply witness.”) (emphasis added). Cellspin violated that prohibition when it
`
`inappropriately submitted and argued the following new evidence:
`
` a new, 56-page-long declaration from its expert witness (Ex. 2026); and
`
`2 Panasonic does not seek to strike Exhibit 2030, the transcript of the deposition
`
`Cellspin took of Panasonic’s expert witness on June 13, 2019.
`
`
`
`IPR2019-00131
`U.S. Pat. No. 9,258,698
`
` six other documents comprising over 300 pages, including two technical
`
`specifications, a published patent application, and website printouts. (Exs.
`
`2027-29 and 2031-33).
`
`Cellspin did not seek, and the Board did not grant, authorization to file these new
`
`exhibits. For this reason alone, they should be stricken.
`
`Second, the untimely new evidence unfairly prejudices Panasonic because
`
`Panasonic has no chance to cross-examine Cellspin’s expert witness on his new
`
`56-page declaration or to address Cellspin’s additional new evidence in briefing.
`
`Cellspin’s new expert declaration would be particularly prejudicial. It amounts to
`
`a lengthy and improper attempt to retract or disavow concessions made in the
`
`expert’s deposition testimony. E.g., Ex. 2026, ¶¶58-61 (purporting to address
`
`“confusion” about his deposition testimony by offering new opinions contrary to
`
`that testimony). Cellspin’s counsel had an opportunity to conduct re-direct
`
`examination during the expert’s deposition, and in fact took advantage of that
`
`opportunity; Cellspin should not be allowed a second and much belated bite at the
`
`apple in an effort to avoid the consequences of its own expert’s testimony.
`
`The new expert declaration is the backbone of Cellspin’s sur-reply. The sur-
`
`reply repeats and cites to the declaration extensively throughout. Thus, the sur-
`
`reply should be stricken as well. See Consolidated Guide, p. 74 (“The Board is not
`
`2
`
`
`
`IPR2019-00131
`U.S. Pat. No. 9,258,698
`
`required to attempt to sort proper from improper portions of the reply or sur-
`
`reply.”) Alternatively, the Board could strike the exhibits and treat the statements
`
`in the sur-reply citing to those exhibits as unsupported attorney argument.
`
`Third, Cellspin improperly deleted spaces between words in record citations
`
`throughout the sur-reply so that each citation could be counted as part of the last
`
`word of the preceding sentence. For example, the fifth sentence on page 4 ends as
`
`follows: “. . . table.’Ex.2003,6;Ex.2026,¶15.” Spaced properly, this citation would
`
`be seven words: “. . . table.’ Ex. 2003, 6; Ex. 2026, ¶15.” With proper citation
`
`spacing, the sur-reply would be approximately 400 words over the 5600 word
`
`limit. Cellspin’s attempt to manipulate the word count gives the Board further
`
`grounds for striking all or part of the sur-reply. “[D]eleting spacing between
`
`words, … in order to circumvent the rules on word count, may lead to a party’s
`
`brief not being considered.” Consolidated Guide, p.40 (emphasis added).
`
`Dated: December 9, 2019
`
`Respectfully submitted,
`
`By: / T. Vann Pearce, Jr. /
`
`T. Vann Pearce, Jr.
`Lead Counsel for Petitioners Panasonic
`Corporation of North America and
`Panasonic Corporation
`
`3
`
`
`
`IPR2019-00131
`U.S. Pat. No. 9,258,698
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing
`
`PETITIONERS PANASONIC CORPORATION AND PANASONIC
`
`CORPORATION OF NORTH AMERICA’S NOTICE OF BASIS FOR
`
`RELIEF REQUESTED UNDER 37 C.F.R. § 42.21 PURSUSANT 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
`Rimôn 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
`
`Attorneys for Petitioners GoPro, Inc. Garmin International, Inc., and Garmin
`USA, Inc.
`
`John J. Edmonds
`Edmonds & Schlather, PLLC
`355 South Grand Avenue, Suite 2450
`Los Angeles, CA 90071
`pto-edmonds@ip-lit.com
`
`Stephen F. Schlather
`Edmonds & Schlather, PLLC
`1616 South Voss Road, Suite 125
`Houston, TX 77057
`sschlather@ip-lit.com
`
`Attorneys for Patent Owner Cellspin Soft, Inc.
`
`/ Karen Johnson /
` Karen Johnson
`
`4
`
`
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