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
`Petitioners,
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`v.
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`CELLSPIN SOFT, INC.
`Patent Owner.
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`CASE: IPR2019-001311
`Patent No. 9,258,698
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`PATENT OWNER CELLSPIN’S REQUEST FOR ORAL ARGUMENT
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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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`Pursuant to 37 C.F.R. § 42.70 and the Board’s April 29, 2019, Scheduling Order (Paper 8), Patent
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`IPR2019-00131
`U.S. Pat. No. 9,258,698
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`Owner Cellspin Soft, Inc. respectfully requests oral argument, which is currently scheduled for January
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`28, 2020. Patent Owner requests that the oral hearing be held at the United States Patent and Trademark
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`Office headquarters in Alexandria, Virginia. Patent Owner submits that 60 minutes is an appropriate
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`argument time for each side at the oral hearing in this IPR2019-00131 proceeding (i.e., 60 minutes for
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`each of Patent Owner and Petitioner Panasonic (totaling 120 minutes) relative to issues in and specific
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`to this IPR2019-00131). The foregoing does not include time to be devoted to oral argument in the
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`separate IPR2019-00127 proceeding.
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` Pursuant to 37 C.F.R. § 42.70, Patent Owner specifies the following issues to be argued:
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` 1. Whether Petitioner has carried its burden to prove that claims 1, 3–5, 7, 8, 10–13, and 15–20
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`of the ’698 patent are unpatentable as obvious under 35 U.S.C. § 103 over the combinations of Mashita,
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`Onishi, and Hiraishi based upon the theories and grounds asserted in Petitioner’s Petition (Paper 1) for
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`which the Board Instituted Inter Partes Review (Paper 11), which encompass each of the claim
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`construction and patentability issues addressed in the Petitioner’s Petition, Patent Owner’s Response and
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`Patent Owner’s Sur-Reply (but see non-waiver of objections noted in #12 below).
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` 2. The claim construction issues noted in #1 include whether the following terms should be
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`construed as Patent Owner has requested, including in the following summary chart:
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`Term
`paired connection
`(including sub-
`definitions for
`pair/pairing/paired)
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`Construction under BRI
`bidirectional communications link between devices which
`provides encrypted data exchange between the devices, and
`the communication link can be disconnected and reconnected
`without having to repeat pairing or authentication
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`cryptographically
`authenticated
`(including sub-
`definitions for
`cryptographic/
`cryptography and
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`verified as a legitimate transmission, user, or system
`including by use of encryption and decryption involving an
`algorithm
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`authenticate/
`authentication)
`graphical user
`interface
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`IPR2019-00131
`U.S. Pat. No. 9,258,698
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`an interface through which a user interacts with electronic
`devices such as computers, hand-held devices and other
`appliances. This interface uses icons, menus and other visual
`indicator (graphics) representations to display information
`and related user controls, unlike text-based interfaces, where
`data and commands are in text. GUI representations are
`manipulated by a pointing device such as a mouse, trackball,
`stylus, or a finger on a touch screen
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`3.
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`Whether the Board should grant or deny either side’s Motion to Strike and/or Exclude,
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`including argument to be presented on either side’s motions and oppositions;
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`4.
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`Whether, irrespective of whether the Board grants Patent Owner’s Motion to Strike
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`and/or Exclude, it should disregard theories, positions, arguments, and evidence untimely and
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`improperly raised in and with Petitioner’s Reply in violation of 37 C.F.R. §42.23(b), including as set
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`forth in Patent Owner’s Objections at Paper 25, in Patent Owner’s submission at Paper 35, and in Patent
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`Owner’s to be filed Motions to Strike and/or Exclude.
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`5.
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` Whether granting Petitioner’s Motion to Strike and/or Exclude in whole or part would
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`result in a violation of Patent Owner’s due process rights, including as noted in Patent Owner’s
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`submission at Paper .
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`6.
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`To the extent that the Board does not issue a ruling on pending Motions to Strike/Exclude,
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`Cellspin specifies argument on all issues raised in its Response and Sur-Reply, as well as in the Exhibits
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`thereto, including the Response and Sur-Reply Declarations of Dr. Michael Foley at Exs. 2009 and 2026
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`(but see non-waiver of objections noted in #12 below).
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`7.
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`Whether this proceeding and/or the decisions arising therefrom constitute an
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`unconstitutional taking and a due process violation (on account of retroactive application of the IPR
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`statute) and/or a violation of the Constitution’s appointments clause, including as already noted and
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`briefed in Patent Owner’s Response and Sur-Reply.
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`8.
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`Argument on all issues specified by Petitioner and/or the Board for argument.
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`9.
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`Rebuttal to Petitioner’s presentation on all matters;
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`IPR2019-00131
`U.S. Pat. No. 9,258,698
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`10.
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`Any other issues raised in other motions or papers filed and/or to be filed in this
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`proceeding, including any Motions to Strike/Exclude and/or Oppositions to Motions to Strike/Exclude;
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`and/or objections to demonstrative exhibits, and/or any other motion or paper filed by any party before
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`oral argument.
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`11.
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`Any other outstanding motions and pleadings, and other issues upon which the Board
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`seeks clarification and/or that the Board deems necessary for issuing a Final Written Decision.
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`12.
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`The issues noted above are stated without prejudice to Patent Owner’s objections to
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`Patent Owner’s Objections at Paper 25, Patent Owner’s submission at Paper 35, and Patent Owner’s to
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`be filed Motions to Strike and/or Exclude. Specifically, to the extent that the Board has, will or may
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`strike or exclude theories, positions, arguments, and evidence untimely and improperly raised in and
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`with Petitioner’s Reply in violation of 37 C.F.R. §42.23(b), Patent Owner’s present request to argue
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`issues addressed in and with its Sur-Reply does not constitute a waiver of objections to issues improperly
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`or un timely being asserted in and with Petitioner’s Reply, or a waiver of such issues improper and/or
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`untimely issues improperly being considered, and/or the basis of any ruling of unpatentability, by the
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`Board.
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`Patent Owner requests the ability to use and provision of audio-visual equipment to display
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`possible demonstratives and exhibits, including an ELMO, projector, and screen. Patent Owner requests
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`that five spaces be reserved at the oral hearing to accommodate its counsel and corporate representative.
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`Patent Owner requests that its counsel be allowed to use computers at counsel’s table, including for
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`consultation and running audio visual presentations.
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`No fees are required for filing this request; however, the Commissioner is authorized to charge
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`Deposit Account No. 506574.
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` If the Board has any questions, comments, or suggestions, the undersigned requests a telephone
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`conference regarding same.
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`IPR2019-00131
`U.S. Pat. No. 9,258,698
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`Dated: December 17, 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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`Stephen F. Schlather, Reg. No. 45,081
`EDMONDS & SCHLATHER, PLLC
`2501 Saltus Street
`Houston, TX 77003
`P: 713-234-0044
`F: 713-224-6651
`E: sschlather@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 REQUEST FOR ORAL ARGUMENT was served in its entirety on
`December 17, 2019, upon the following parties via electronic service:
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`David T. Xue
`Karineh Khachatourian
`Rimon Law
`2479 East Bayshore Road, Suite 210 Palo
`Alto, CA 94303
`david.xue@rimonlaw.com
`karinehk@rimonlaw.com
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`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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