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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Panasonic Corporation and Panasonic Corporation of North America
`Petitioners,
`
`v.
`
`Cellspin Soft, Inc.
`Patent Owner.
`
`
`CASE: IPR2019-001311
`Patent No. 9,258,698
`
`PATENT OWNER CELLSPIN’S MOTION TO STRIKE AND,
`ALTERNATIVELY, EXCLUDE IMPROPER REPLY AND REPLY
`EVIDENCE ASSERTED BY PETITIONER PANASONIC
`
`
`
`
`1 GoPro, Inc., Garmin International, Inc. and Garmin USA, Inc. were joined as parties to
`this proceeding. Paper 29.
`
`1
`
`
`

`

`B.
`
`C.
`
`D.
`
`E.
`
`F.
`
`TABLE OF CONTENTS
`TABLE OF AUTHORITIES .............................................................................................. iii
`I.
`Introduction and Relief Requested .......................................................................... 1
`II.
`Procedural History .................................................................................................. 4
`III.
`Argument Including Basis for Relief Under §42.23(b) and Due Process ............... 4
`A.
`Panasonic’s new Reply theory concerning paired wireless connections
`being obvious, including in view of Bluetooth, should be stricken or,
`alternatively, excluded. ........................................................................................... 4
`Panasonic’s new Reply theory concerning multiple modules performing
`the claimed functions rendering obvious a single client application
`performing the claimed functions should be stricken or, alternatively,
`excluded. ................................................................................................................ 5
`Panasonic’s new Reply theories and directions concerning Mashita’s PIN
`being the same thing as, or interchangeable with, a BT passkey, about an
`“automatic” paired connection resulting from PIN entry, and/or about
`nothing more being required than Mashita’s PIN to accomplish BT
`pairing, should be stricken or, alternatively, excluded. .......................................... 7
`Panasonic’s new Reply theories and directions concerning Mashita’s
`description allegedly matching descriptions of “pairing” in the BT and/or
`that the BT spec. indicates Mashita’s PIN would result in a paired
`connection, should be stricken or excluded. ........................................................... 8
`Panasonic’s new Reply matters concerning BT pairing being an
`“authentication process” that is the same and/or similar to Mashita’s PIN
`method should be stricken or, alternatively, excluded. ........................................... 11
`The new Reply matters concerning Mashita’s PIN exchange comprising
`pairing per BT spec., Mashita’s PIN as a PIN per the BT spec., BT spec.
`documents supporting the Mashita PIN resulting in pairing and/or link
`key; Mashita’s PIN being sufficient for BT pairing, and/or Mashita’s PIN
`being used for BT link key, should be stricken or alternatively excluded .............. 12
`Panasonic’s new Reply matters concerning combining Mashita’s BT
`connection with the disclosure of the BT Spec. meeting “cryptographic
`authentication” because the BT Spec. includes cryptographic algorithms
`should be stricken or, alternatively, excluded. ........................................................ 12
`Panasonic’s new Reply matters concerning cryptographic authentication
`being inherent in Bluetooth, and/or Mashita allegedly disclosing this
`because it allegedly discloses BT pairing, should be stricken or excluded. ........... 13
`Panasonic’s new Reply theory and direction that Mashita “could be read to
`disclose” Limitation J should be stricken or, alternatively, excluded. .................... 13
`
`G.
`
`H.
`
`I.
`
`
`
`i
`
`

`

`J.
`
`K.
`
`IV.
`
`
`Panasonic’s new “catch-all” obviousness theory in the Strawn Reply
`Declaration should be stricken, or alternatively, excluded. .................................... 14
`Panasonic’s new reply theories and directions attempting to rely upon the
`alleged GUI of the Sony Z520a and/or N73 for GUI being met and/or
`attempting to bolster the alleged Onishi GUI by analogizing it to the Sony
`Z520a and/or N73, should be stricken, or alternatively, excluded. ........................ 15
`Conclusion .............................................................................................................. 15
`
`
`
`
`ii
`
`

`

`TABLE OF AUTHORITIES
`
`Cases:
`Genzyme v. Biomarin Pharm., 825 F.3d 1360 (Fed. Cir. 2016) ....................................... 1,2
`Intelligent Bio-Sys. v. Illumina Cambridge, 821 F.3d 1359 (Fed. Cir. 2016).................... 1
`In re NuVasive, 841 F.3d 966 (Fed. Cir. 2016).................................................................. 1
`Belden v. Berk-Tek, 805 F.3d 1064 (Fed. Cir. 2015) ......................................................... 1
`Apple v. e-Watch, IPR2015-00412 (Paper 50, p. 44) (PTAB May 6, 2016) ...................... 1
`Abbott Labs. v. Cordis, 710 F.3d 1318 (Fed. Cir. 2013) ................................................... 2
`Yeda Res. v. Mylan, 906 F.3d 1031 (Fed. Cir. 2018) ......................................................... 2
`Dell v. Acceleron, 818 F.3d 1293 (Fed. Cir. 2016) ............................................................ 2
`N. Am. Coal v. Miller, 870 F.2d 948 (3d Cir. 1989) .......................................................... 2
`
`Constitution and Statutes:
`37 C.F.R. §42.23(b) ........................................................................................................... Passim
`5 U.S.C. §§ 554(b)-(c), 556(d), 557(c) .............................................................................. 1
`U.S. Constitution, Due Process Clause .............................................................................. Passim
`
`
`
`iii
`
`

`

`I.
`
`Introduction and Relief Requested.
`
` The Board should strike the improper new theories, directions, approaches,
`
`arguments and evidence in Panasonic’s Reply and its exhibits noted in Section III,
`
`which are not proper rebuttal and which Panasonic could, and should, have presented
`
`in its prima facie case in its Petition (collectively the “Improper New Matters”),
`
`including pursuant to 37 C.F.R. §42.23(b), the Administrative Procedure Act
`
`(“APA”) and due process. See Genzyme v. Biomarin Pharm., 825 F.3d 1360, 1365-
`
`66 (Fed. Cir. 2016); Intelligent Bio-Sys. v. Illumina Cambridge, 821 F.3d 1359,
`
`1369-70 (Fed. Cir. 2016); In re NuVasive, 841 F.3d 966, 973 (Fed. Cir. 2016);
`
`Belden v. Berk-Tek, 805 F.3d 1064, 1078, 1081 (Fed. Cir. 2015); Apple v. e-Watch,
`
`IPR2015-00412 (Paper 50, p. 44) (PTAB May 6, 2016); See Consolidated Guide,
`
`pp. 73 & 80-81. See also 5 U.S.C. §§ 554(b)-(c), 556(d), 557(c); Abbott Labs. v.
`
`Cordis, 710 F.3d 1318, 1328 (Fed. Cir. 2013). Panasonic’s Reply constitutes a clear,
`
`egregious and unfairly prejudicial violation, including because everything, or at
`
`minimum substantially everything of substance or consequence, is Improper New
`
`Matters.
`
`This egregious violation severely prejudices Cellspin at this advanced stage of
`
`this proceeding. Failure to strike, or, alternatively, exclude, would also violate the
`
`APA and its guarantees of due process, including fair notice and the opportunity to
`
`respond and be fairly heard. Admission of these Improper New Matters would
`
`1
`
`
`

`

`violate due process, including due to insufficient notice and insufficient opportunity
`
`to respond. See Genzyme, 825 F.3d at 1366; Yeda Res. v. Mylan, 906 F.3d 1031,
`
`1040 (Fed. Cir. 2018); Dell v. Acceleron, 818 F.3d 1293, 1301 (Fed. Cir. 2016).
`
`Further, the Board does not strike or at minimum disregard these Improper New
`
`Matters, any decision in this proceeding will be subject to vacatur lack of due
`
`process. See id. at 1301-02; N. Am. Coal v. Miller, 870 F.2d 948, 951 (3d Cir. 1989).
`
`Anything short of striking these Improper New Matters, or alternatively,
`
`excluding them, would violate Cellspin’s due process rights and the APA, and
`
`substantially and unfairly prejudice Cellspin. Including because Panasonic’s Reply
`
`and the Strawn Reply Declaration at Ex. 1024 constitute such an egregious violation
`
`of §42.23(b) and fundamental fairness, and because nothing of substance is left in
`
`the Reply or Declaration when the improper matters are excluded, the just, fair and
`
`proper remedy, including under the totality of the circumstances is striking (or,
`
`alternatively, at minimum, excluding and/or disregarding) the entire Reply and
`
`supporting evidence cited therein. See Practice Guide at 74.
`
`Alternatively, §42.23(b), due process and fundamental fairness requires striking
`
`(or, alternatively, at minimum, excluding and/or disregarding) the portions noted
`
`specifically herein from Panasonic’s Reply and the evidence it relies upon, including
`
`the Strawn Reply Declaration (Ex. 1024) and Exhibits 1026-1028 and 1030-31 relied
`
`upon by Ex. 1024 and the Reply. It would constitute a grave due process violation if
`
`
`
`2
`
`

`

`the Board does not strike or disregard the Improper New Matters asserted in
`
`Panasonic’s Reply, especially when the Board is entertaining Panasonic’s motion to
`
`strike Cellspin’s Sur-Reply and evidence in support thereof that is directly
`
`responsive to the Improper New Matters asserted in Panasonic’s Reply.
`
`Further, the fact that Cellspin was able to file a Sur-Reply did not cure
`
`Panasonic’s inexcusable violation of §42.23(b) or the due process violation that
`
`would result without the relief sought herein, including due to the advanced stage,
`
`limited time frame, word count and/or scope for sur-replies. Disallowing, refusing
`
`to consider and/or failing to grant leave for (with such leave expressly being
`
`requested to the extent needed) the evidence supporting Cellspin’s Sur-Reply and/or
`
`portions of the Sur-Reply reliant thereon would constitute a grievous violation of
`
`Cellspin’s right to due process, including if any or all of Panasonic’s new matters
`
`were erroneously considered by the Board.
`
`Further, Cellspin’s Sur-Reply and its evidence were primarily and substantially
`
`devoted to attempting to address improper new matters in the Reply. Thus, it would
`
`further be a grievous and fundamentally unfair move to improperly strike Cellspin’s
`
`responsive matters in and cited by its Sur-Reply, including if the Board declined to
`
`strike the improper new matters in Panasonic’s Reply to which Cellspin was
`
`responding.
`
`Finally, should the Board wish, erroneously, to impose a more lenient sanction
`
`
`
`3
`
`

`

`as an alternative to striking, or alternatively, disregarding the Reply, however, then
`
`Board could, still in violation of Cellspin’s due process rights, at a minimum strike
`
`the Exhibits objected to and treat the statements in the Reply citing to those exhibits
`
`as unsupported attorney argument.
`
`II.
`
`Procedural History
`
`The Order at Paper 39 authorized Cellspin to file a motion to strike consistent
`
`with its December 9, 2019 Notice. This motion is consistent with, and maps directly
`
`to, the Notice including its request to strike or exclude/disregard Panasonic’s entire
`
`Reply and its evidence, including listed categories of Improper New Matters plus
`
`and including the Improper New Matters noted in Cellspin’s Objections at Paper 25.
`
`III. Argument Including Basis for Relief Under §42.23(b) and Due Process.
`
`A. Panasonic’s new Reply theory concerning paired wireless connections
`being obvious, including in view of Bluetooth, should be stricken or,
`alternatively, excluded.
`Panasonic’s theory in its Petition for the “paired wireless connection” limitation
`
`being met was that each of Mashita, Onishi and Hiraishi disclosed paired wireless
`
`connections, namely that any Bluetooth (hereinafter “BT”) connection was a paired
`
`wireless connection. Paper 1 (Pet.), pp. 38-39 (“Mashita… local wireless connection
`
`is synonymous with a Bluetooth connection… Onishi and Hiraishi also disclose a
`
`Bluetooth short-range wireless connection between the digital camera device and the
`
`cellular phone… A POSITA also would understand that “paired” or pairing refers to
`
`
`
`4
`
`

`

`the establishment of the Bluetooth connection...”). This theory did not rely upon
`
`specific content in the BT Specification (the “BT Spec.”) equating Mashita’s specific
`
`processes, for example, Mashita’s PIN exchange, to a pairing or link key process.
`
`Id. Panasonic had no obviousness theory with regard to paired wireless connections.
`
`Paper 1 (Pet.), pp. 38-39. Panasonic’s Reply improperly relies upon this new
`
`obviousness theory in multiple places. E.g., Pet, p. 1 (“Cellspin never explains how
`
`pairing could possibly be a non- obvious implementation of Bluetooth…This is
`
`textbook obviousness…); p. 4 (“The prior art … at least would have rendered
`
`obvious a paired Bluetooth connection (see infra Section IV).”); p. 19 (“it Would
`
`Have Been Obvious to a POSITA to Implement the Bluetooth Connections
`
`described in Mashita, Onishi, and Hiraishi as a Paired Connection...This is textbook
`
`obviousness…”).
`
`B. Panasonic’s new Reply theory concerning multiple modules performing
`the claimed functions rendering obvious a single client app. performing
`the claimed functions should be stricken or, alternatively, excluded.
`Claim 5 of the ‘698 patent covers digital camera comprising a software
`
`application configured to initiate a data transfer request, store, use HTTP to upload
`
`and provide a GUI as required by the claim. Claim 8 covers a system a software
`
`application configured to control a cellular phone processor to send, store, provide a
`
`GUI and use HTTP to upload. Panasonic had no theory in its Petition for a software
`
`application that performed all of the functions in claim 5 or claim 8. Panasonic did
`
`
`
`5
`
`

`

`not even try to show this. Rather, Panasonic vaguely deemed claims 5 and 8 to be
`
`“effectively” system versions of claim 1. Pet, p. 24-25. Panasonic analyzed
`
`“common limitations of the claims” together. Pet., pp. 25-68 (e.g., p. 25: “Common
`
`limitations of the claims will be addressed together in the sections below.”).
`
`Panasonic relied upon Mashita’s “file transfer program 403” for “Limitation G,”
`
`characterized as “receiving a data transfer request from the cellular phone,” Pet. pp.
`
`51-52. Panasonic relied upon a “connection request to the digital camera using the
`
`file transfer program.” Id., p. 52. However, Panasonic admitted that “Mashita does
`
`not expressly disclose that the cellular phone requests a data transfer specifically...”
`
`Id., p. 52. For this, Panasonic relied upon vaguely alleged “dedicated software” in
`
`Hiraishi, Id., p. 53, and it vaguely stated that unspecified “’software’ on the phone
`
`initiating the transfer request would thus be a mobile software application.” Id. For
`
`the “receive” limitation of claim 8, Panasonic again relied upon file transfer program
`
`405. Id. p. 58. For the “receive” limitation of claim 5, Panasonic merely relied upon
`
`a processor receiving. Id., pp. 57-58. For the “store” limitation of claims 5 and 8,
`
`Panasonic merely relied upon a phone, specifically CPYU 301 controlling the
`
`process of storing. Id., pp. 58-60. For the “using HTTP to upload” limitation of
`
`claims 5 and 8, Panasonic relied upon a phone performing this function. Id. p. 60—
`
`62. Panasonic did not even attempt to address the software application providing a
`
`GUI limitation of claims 5 and 8. Rather, Panasonic attempted to show that each of
`
`
`
`6
`
`

`

`Mashita and Onishi discloses that “cellular phone has a GUI” and that Onishi
`
`discloses “using… phone to delete image.” Id. pp. 65-67.
`
`Panasonic’s Reply at pp. 29-30 improperly asserts a new Reply theory that,
`
`“[e]ven if claims 5 and 8 were construed (erroneously) as requiring a single
`
`application, that application could include separate modules. This modular
`
`programming approach would have been obvious to a POSITA….” The Strawn
`
`Reply declaration improperly argues this same new Reply theory and direction that
`
`“a client application composed of multiple modules” and/or “modular
`
`programming” from the combination of Mashita and Hiraishi [] would render …
`
`obvious” the “approach” or “single application” of claims 5 and 13. Ex. 1024, ¶25-
`
`30 (e.g.,. . “I do not see a distinction between using a client application … the
`
`combination of Mashita and Hiraishi… would render such an approach obvious”);
`
`¶29 (“To a POSITA, this modular programming approach would have been obvious
`
`in view of Mashita [and] Hiraishi); ¶30 (“this [] would have been obvious”).
`
`At minimum, these New Improper Matters in the Reply and Ex. 1024 should be
`
`stricken or, alternatively, excluded under §42.23(b), the APA and/or due process.
`
`C. Panasonic’s new Reply theories and directions concerning Mashita’s PIN
`being the same thing as, or interchangeable with, a BT passkey, about an
`“automatic” paired connection resulting from PIN entry, and/or about
`nothing more being required than Mashita’s PIN to accomplish BT
`pairing, should be stricken or, alternatively, excluded.
`
`
`
`7
`
`

`

`Section A above recites Panasonic’s Petition theory for pairing, i.e., “paired
`
`wireless connection.” The Petition only relied upon Mashita’s PIN exchange for
`
`“cryptographically authenticating” because the PIN was a “secret.” E.g., Pet, p. 40
`
`(“Because … a user keeps a PIN secret, the process of entering the PIN … is
`
`cryptographic authentication.”). Pages 8-9 of the Reply newly asserts that the PIN
`
`match in Mashita results “automatically” in a BT paired connection. Id. p. 9. They
`
`also newly assert that the “difference in wording between ‘PIN’ and ‘passkey’ is
`
`immaterial, because the terms are interchangeable.” However, as noted above, the
`
`Petition relied upon merely a general reference to Bluetooth as disclosing the
`
`“paired” portion of Limitation C and separately upon the PIN for the “cryptographic
`
`authentication” portion due to its being a secret. Attempting to bolster this new Reply
`
`theory/approach, the Strawn Reply declaration newly asserts that the terms PIN and
`
`passkey are the same and interchangeable and that references in the BT Spec. to a
`
`passkey should now be construed as if referring to a PIN. Ex. 1024, ¶ 48.
`
`At minimum, these New Improper Matters in the Reply and Ex. 1024 should
`
`be stricken or, alternatively, excluded under §42.23(b), the APA and/or due process.
`
`D. Panasonic’s new Reply theories and directions concerning Mashita’s
`description allegedly matching descriptions of “pairing” in the BT and/or
`that the BT spec. indicates Mashita’s PIN would result in a paired
`connection, should be stricken or excluded.
`
`
`
`8
`
`

`

`As noted in Sections A and C above, Panasonic’s theory in its Petition for pairing
`
`was that mere general references in Mashita, Onishi and Hiraishi to using BT (which
`
`did not rely upon content in the BT spec. equating, for example, Mashita’s PIN
`
`exchange to a pairing or link key process) was sufficient to disclose paired wireless
`
`connections. Panasonic’s Petition did not rely upon Mashita’s PIN entry for pairing.
`
`It only relied upon the PIN for “cryptographically authenticating” because the PIN
`
`was a secret. E.g., Pet, p. 40. Panasonic’s Reply pp. 10-13 newly asserts that,
`
`“Mashita’s description matches … the descriptions of ‘pairing’ in the BT Spec.
`
`documents… and that “[t]he Bluetooth specifications repeatedly describe pairing
`
`occurring by a user entering a PIN…[a] POSITA thus would have known that the
`
`PIN inputs disclosed in Mashita would result in a paired connection.”
`
`The Reply relies upon new theories and approaches expressed in the ¶¶12-20 of
`
`the Strawn Declaration at Ex. 1024. At ¶12, it newly asserts that, based upon the
`
`Bluetooth specification, “if a PIN has been successfully entered (for example by
`
`matching PIN codes), as Mashita discloses, then Bluetooth pairing occurs.” At ¶13
`
`it newly asserts that “[a]ccording to the Bluetooth Specification, if a PIN has been
`
`input to both devices, and the connection is successful (by matching the PIN codes),
`
`pairing has happened.” At ¶14 it newly asserts that “Bluetooth pairing necessarily
`
`occurs in order for these subsequent steps to occur….” At ¶¶15-16 it newly asserts:
`
`
`
`9
`
`

`

`[T]he PIN… during Bluetooth… generat[es] an ‘initialization key’… used to
`create a link key…[t]he link key is generated using an algorithm… the ‘key
`generating algorithm’ exploits a ‘cryptographic function.’… this is exactly
`what happens in Mashita…The BD_ADDR of the Bluetooth Specification is
`the ‘physical address’ of Mashita [and]… PIN of the Bluetooth Specification
`is the PIN of Mashita, and that PIN is used during Bluetooth pairing…..
`At ¶17 it newly asserts that “pairing explicitly happens if a PIN is exchanged, as in
`
`Mashita, and ….if pairing happened previously and a link key derived from the PIN
`
`already exists… and pairing need not be repeated this time.” At ¶18 it newly asserts
`
`that, “use of PIN input confirms that pairing has happened” and “if a PIN is input by
`
`a user, the devices are performing … Pairing during connection establishment.” At
`
`¶18 it also newly asserts that “Bluetooth Specification documents describe[] using a
`
`PIN input to establish a paired connection” and “the Bluetooth Specification notes
`
`that using a 4-digit PIN for pairing was common for devices compliant…”. At ¶20
`
`it newly asserts that, “[b]ecause Mashita discloses that a PIN is ‘input … with both
`
`being Bluetooth devices, and because Mashita then discloses ‘an authentication
`
`process…’… a POSITA would understand that Mashita clearly discloses that
`
`Bluetooth pairing has … occurred.” At ¶21 it newly asserts that a “POSITA” would
`
`“understand… link key is… derived from the PIN…” At ¶22 it newly asserts that,
`
`…PIN generates a link key…Encrypted … can only follow authentication which
`… requires pairing… the PIN is used to derive the authentication key, which in
`turn is used to derive an encryption key…The encryption key is derived from the
`
`
`
`10
`
`

`

`authentication key [i.e., link key]… a POSITA would understand that the PIN,
`device address, pairing, and authentication disclosed in Mashita provide…for
`such data encryption in Bluetooth.
`At a minimum, these New Improper Matters in the Reply and Ex. 1024 should
`
`be stricken or, alternatively, excluded under §42.23(b), the APA and/or due process.
`
`E. Panasonic’s new Reply matters concerning BT pairing being an
`“authentication process” that is the same and/or similar to Mashita’s PIN
`method should be stricken or, alternatively, excluded.
`As noted in Sections A, C and D above, Panasonic’s theory in its Petition for
`
`pairing was that mere general references in Mashita, Mashita, Onishi and Hiraishi to
`
`using BT (which did not rely upon content in the BT spec. equating, for example,
`
`Mashita’s PIN exchange to a pairing or link key process) was sufficient to disclose
`
`paired wireless connections. Panasonic’s Petition did not rely upon Mashita’s PIN
`
`entry for pairing. It only relied upon the PIN for “cryptographically
`
`authenticating” because the PIN was a secret.
`
`However, at p. 13, the Reply newly asserts that “[a]s shown in the Bluetooth
`
`specification excerpts above, authentication is part of the Bluetooth pairing process
`
`and uses the PIN. Ex. 1024, ¶¶14-16. It is thus correct to describe Bluetooth pairing
`
`as an “authentication process,” as Mashita does.” This new argument relies upon
`
`new theories/directions in Ex. 1024, ¶¶14-16 which are already noted in Section D.
`
`At a minimum, these New Improper Matters in the Reply and Ex. 1024 should be
`
`stricken or, alternatively, excluded under §42.23(b), the APA and/or due process.
`
`
`
`11
`
`

`

`
`
`F. The new Reply matters concerning Mashita’s PIN exchange comprising
`pairing per BT spec., Mashita’s PIN as a PIN per the BT spec., BT spec.
`documents supporting the Mashita PIN resulting in pairing and/or link
`key; Mashita’s PIN being sufficient for BT pairing, and/or Mashita’s PIN
`being used for BT link key, should be stricken or alternatively excluded.
`Panasonic’s Petition theory for pairing is noted in Sections A, C and D above. At
`
`pp. 13-14, the Reply newly asserts that “the Bluetooth pairing process described in
`
`Mashita results in a link key, Ex. 1024, ¶¶15-16” which Panasonic argues establishes
`
`cryptographic authentication. This relies upon new theories/directions in Ex. 1024,
`
`¶¶15-16 which are already noted in Section D.
`
`At a minimum, these New Improper Matters in the Reply and Ex. 1024 should
`
`be stricken or, alternatively, excluded under §42.23(b), the APA and/or due process.
`
`G. Panasonic’s new Reply matters concerning combining Mashita’s BT
`connection with the disclosure of the BT Spec. meeting “cryptographic
`authentication” because the BT Spec. includes cryptographic algorithms
`should be stricken or, alternatively, excluded.
`As noted in Section A above, Panasonic’s Petition theory for “cryptographically
`
`authenticating” was that Mashita’s PIN exchange involved a secret PIN. Panasonic
`
`did not attempt to show encryption, decryption or a cryptographic algorithm. E.g.,
`
`Pet, p. 40. However, continuing from E-G above, the Reply, p. 19 newly asserts that,
`
`[T]he Bluetooth specifications show that Mashita’s Bluetooth connection
`would use ‘encryption and decryption involving an algorithm’… ‘[t]he key
`
`
`
`12
`
`

`

`used for authentication’ is derived using a ‘key generating algorithm’ which
`exploits a ‘cryptographic function’…. [t]hat algorithm uses as inputs ‘the PIN
`… and in turn, a link key…. Ex. 1024, ¶¶15-16. Mashita likewise discloses
`authentication using a PIN… A POSITA would thus understand that
`Mashita… would be “cryptographic” using an “algorithm.” Ex. 1024, ¶15.”
`This new argument relies upon new theories/directions in Ex. 1024, ¶¶15-16 which
`
`are already noted above in Section D.
`
`At a minimum, these New Improper Matters in the Reply and Ex. 1024 should
`
`be stricken or, alternatively, excluded under §42.23(b), the APA and/or due process.
`
`H. Panasonic’s new Reply matters concerning cryptographic authentication
`being inherent in Bluetooth, and/or Mashita allegedly disclosing this
`because it allegedly discloses BT pairing, should be stricken or excluded.
`As noted in A above, the Petition theory for “cryptographically authenticating”
`
`was that Mashita’s PIN was secret. Panasonic did not attempt to show encryption,
`
`decryption or cryptographic algorithm. E.g., Pet, p. 40. Reply, pp. 18-19 newly
`
`asserts that cryptographically authenticating is “inherent” BT pairing and “Because
`
`Mashita discloses pairing, It also discloses ‘cryptographically authenticating…’”
`
`At a minimum, these New Improper Matters in the Reply and Ex. 1024 should
`
`be stricken or, alternatively, excluded under §42.23(b), the APA and/or due process.
`
`I. Panasonic’s new Reply theory and direction that Mashita “could be read
`to disclose” Limitation J should be stricken or, alternatively, excluded.
`Limitation J, found in claims 1 and 13, recites “…phone is configured to use
`
`HTTP to upload…” The Petition theory was that since Mashita only disclosed FTP
`
`
`
`13
`
`

`

`upload that Mashita combined with Hiraishi’s alleged HTTP upload rendered this
`
`obvious. Pet, p. 61. However, Reply p. 25 newly asserts that “Mashita could be read
`
`to disclose Limitation J on its own” because HTTP is allegedly a “protocol for public
`
`wireless communication” and a phone allegedly implementing Mashita might use a
`
`browser that might use HTTP. This assertion relies upon Ex. 1024, ¶¶40-42 (e.g.,
`
`“HTTP and FTP are more closely related than might appear initially...”), which in
`
`turn rely upon Reply Exhs. 1026-1028 and 1030-31. Reply, pp. 24-25.
`
`At a minimum, these New Improper Matters in the Reply and its supporting Exhs.
`
`1024, 1026-1028 and 1030-31 should be stricken or, alternatively, excluded.
`
`J. Panasonic’s new “catch-all” obviousness theory in the Strawn Reply
`Declaration should be stricken, or alternatively, excluded.
`At ¶10, Ex. 1024 attempts a vague catch-all for new obviousness theories that “a
`
`person of ordinary skill in the art would have had many reasons to combine,
`
`supplement, and/or modify the teachings of Mashita, Onishi, and Hiraishi …
`
`Accordingly, the … Claims would have been obvious...”
`
`At a minimum, this vague new theory should be stricken or, alternatively,
`
`excluded under §42.23(b), the APA and/or due process.
`
`
`
`
`
`
`
`
`
`14
`
`

`

`K. Panasonic’s new reply theories and directions attempting to rely upon the
`alleged GUI of the Sony Z520a and/or N73 for GUI being met and/or
`attempting to bolster the alleged Onishi GUI by analogizing it to the Sony
`Z520a and/or N73, should be stricken, or alternatively, excluded.
`Panasonic’s Petition relied upon the “combination of Mashita and Onishi” to
`
`disclose Limitation K of claims 1, 5, 8, and 13, i.e., using a GUI “to delete the created
`
`new-media file.” Pet, pp. 65-68. However, Panasonic’s Reply asserts “[t]his is a
`
`directional navigation key used to manipulate the… GUI, common in… phones,
`
`including the Sony z520a and N73,” and Ex. 1024, ¶¶59-61. At a minimum, these
`
`New Improper Matters in the Reply and Ex. 1024 should be stricken or, alternatively,
`
`excluded under §42.23(b), the APA and/or due process.
`
`IV. Conclusion.
`
`At a minimum, the foregoing New Improper Matters in the Reply and its
`
`supporting Exhs. 1024, 1026-1028 and 1030-31 should be stricken or, alternatively,
`
`excluded under §42.23(b), the APA and/or due process. More specifically, Cellspin
`
`requests the full relief requested above for the reasons noted above.
`
`
`
`
`
`Dated: December 23, 2019
`
`Respectfully submitted,
`
`/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
`
`
`
`15
`
`

`

`Email: pto-edmonds@ip-lit.com
`
`
`Stephen F. Schlather, Reg. No. 45,081
`EDMONDS & SCHLATHER, PLLC
`2501 Saltus Street
`Houston, TX 77003
`Telephone: 713-234-0044
`Facsimile: 713-224-6651
`Email: sschlather@ip-lit.com
`
`
` 
`
`
`Certificate of Service
`
`I hereby certify that this Motion is being served on December 23, 2019 2019 by
`
`
` 
`
`
`
`electronic mail and PTAB ECF to the following:
`
`vpearce@orrick.com
`TVPPTABDocket@orrick.com
`Jennifer.Bailey@eriseip.com
`Adam.Seitz@eriseip.com
`PTAB@eriseip.com
`karinehk@rimonlaw.com
`
`Dated: December 23, 2019
`
`
`
`
`
`
`
`
`
`/s/ John J. Edmonds
`John J. Edmonds
`
`Counsel for Owner,
`Cellspin Soft, Inc.
`
`16
`
`