From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`Trials
`John Edmonds; Trials
`Steve Schlather; Pearce Jr., T. Vann; Medina, David R.; Jennifer Bailey; Adam P. Seitz; Karineh Khachatourian;
`David Xue
`RE: IPR2019-00131: Patent Owner"s Request for authorization to file motion to strike
`Wednesday, December 4, 2019 4:28:41 PM
`image002.png
`
`Pursuant 37 C.F.R. Section 42.21, each party is required to file a notice regarding the specific relief it
`requests and the basis for the requested relief. The notice shall be filed on or before December 9, 2019.
`Once the notices are received, the Board will determine whether or not motions to strike will be
`authorized and, if authorized, set a briefing schedule.
`
`Patent Owner is further required to explain the timing of its request to file a motion to strike:
`
`Generally, authorization to file a motion to strike should be requested within one week of the
`allegedly improper submission. Consolidated Trial Practice Guide, 81 (November 2019).
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`From: John Edmonds <jedmonds@ip-lit.com>
`Sent: Wednesday, December 4, 2019 12:08 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Steve Schlather <sschlather@ip-lit.com>; Pearce Jr., T. Vann <vpearce@orrick.com>; Medina,
`David R. <dmedina@orrick.com>; Jennifer Bailey <jennifer.bailey@eriseip.com>; Adam P. Seitz
`<adam.seitz@eriseip.com>; Karineh Khachatourian <karinehk@rimonlaw.com>; David Xue
`<david.xue@rimonlaw.com>
`Subject: IPR2019-00131: Patent Owner's Request for authorization to file motion to strike
`
`Dear Board,
`
`Patent Owner Cellspin Soft, Inc. (“Cellspin”) had asked Panasonic to make a joint request for
`a call on this subject, but Panasonic declined. Cellspin also requests authorization to file a
`motion to strike. Cellspin’s motion would ask the Board to strike the second expert
`declaration that Panasonic submitted with its reply (Ex. 1024) as well as Exhibits 1026-1028
`and 1030-1031 also submitted with Panasonic’s reply. The basis for striking includes that the
`foregoing have improper new evidence, new theories, new approaches, and/or new issues on
`Reply, including in violation of 37 CFR § 42.23(b). For example and without limitation,
`Panasonic’s Reply Brief and exhibits assert entirely new obviousness theories, where
`obviousness was not even a basis in Panasonic’s petition or in the Board’s institution
`decision. In addition, Cellspin’s motion would ask the Board to strike Panasonic’s reply brief,
`in whole or in part, including based upon the foregoing.
`
`Cellspin has conferred with Panasonic, who opposes this request. Apparently there was some
`
`

`

`time zone confusion about the parties’ mutual availability for a call, should the Board wish to
`schedule one. The parties are mutually available on Monday, December 9 at or after 1 pm ET,
`or after 11 AM ET on Tuesday, December 10.
`
`Respectfully Submitted,
`
`John Edmonds
`EDMONDS & SCHLATHER PLLC
`2501 Saltus Street
`Houston, Texas 77003
`713.364.5291
`355 S. Grand Ave, Suite 2450
`Los Angeles, CA 90071
`213.973.7846
`jedmonds@ip-lit.com
`
`Lead counsel for Patent Owner Cellspin Soft, Inc.
`
`From: Pearce Jr., T. Vann <vpearce@orrick.com>
`Sent: Wednesday, December 4, 2019 10:42 AM
`To: trials@uspto.gov
`Cc: John Edmonds <jedmonds@ip-lit.com>; Steve Schlather <sschlather@ip-lit.com>; Medina, David
`R. <dmedina@orrick.com>; Jennifer Bailey <jennifer.bailey@eriseip.com>; Adam P. Seitz
`<adam.seitz@eriseip.com>; Karineh Khachatourian <karinehk@rimonlaw.com>; David Xue
`<david.xue@rimonlaw.com>
`Subject: IPR2019-00131: Request for authorization to file motion to strike
`Dear Board,
`
`Petitioners Panasonic Corporation and Panasonic Corporation of North America
`respectfully request authorization to file a motion to strike. The motion would
`ask the Board to strike the second expert declaration that Patent Owner
`submitted with its sur-reply (Ex. 2026) as well as Exhibits 2027-2029 and 2031-33
`also submitted by Patent Owner with its sur-reply. See Section II.I of the Trial
`Practice Guide Update (August 2018) (page 14). In addition, the motion would
`ask the Board to strike Patent Owner’s sur-reply brief in whole or in part based
`on its citation to these exhibits and circumventing the word count limit. See
`Section II.A.3. of the Trial Practice Guide Update (August 2018) (page 7) (citing
`Pi-Net Int’l, Inc. v. JPMorgan Chase & Co., 600 F. App’x 774 (Fed. Cir. 2015)).
`
`Petitioners have conferred with Patent Owner, who opposes this request. Should
`the Board wish to schedule a conference call, counsel for both sides are available
`during the afternoon of Monday December 9, or after 11 AM on Tuesday,
`December 10.
`
`Respectfully Submitted,
`Vann Pearce
`Lead Counsel for Petitioners Panasonic Corporation and Panasonic Corporation
`
`

`

`of North America
`
`Vann Pearce
`Partner, Intellectual Property
`
`Orrick
`Washington, DC
`T +1-202-339-8696
`vpearce@orrick.com
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