`571-272-7822
`
`
`
`
`Paper 20
`Entered: December 3, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CANON U.S.A., INC.,
`Petitioner,
`v.
`CELLSPIN SOFT, INC.,
`Patent Owner.
`
`IPR2019-00127
`Patent 9,258,698 B2
`___________
`
`PANASONIC CORPORATION OF NORTH AMERICA et al.,
`Petitioners,
`v.
`CELLSPIN SOFT, INC.,
`Patent Owner.
`
`Case IPR2019-00131
`Patent 9,258,698 B2
`_____
`
`GOPRO, INC., GARMIN INT’L, INC., AND GARMIN USA, INC.,
`Petitioners,
`v.
`CELLSPIN SOFT, INC.,
`Patent Owner.
`
`IPR2019-01107
`Patent 9,258,698 B2
`
`
`
`
`
`
`
`
`
`IPR2019-00127, -00131, -01107, -01108
`Patent 9,258,698 B2
`
`
`_______
`
`GOPRO, INC., GARMIN INT’L, INC., AND GARMIN USA, INC.,
`Petitioners,
`v.
`CELLSPIN SOFT, INC.,
`Patent Owner.
`
`Case IPR2019-01108
`Patent 9,258,698 B21
`
`
`
`
`
`Before GREGG I. ANDERSON, DANIEL J. GALLIGAN, and
`STACY B. MARGOLIES, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`A joint conference call for all of the above-captioned proceedings
`(respectively “’127 IPR,” “’131 IPR,” “’1107 IPR,” “’1108 IPR”) was held
`on November 26, 2019. Judges Anderson, Galligan, and Margolies
`participated along with counsel for petitioners Canon U.S.A., Inc. (’127 IPR),
`Panasonic Corporation of North America et al. (’131 IPR), GoPro, Inc. and
`Garmin Int’l, Inc. et al. (’1107 and ’1108 IPRs) (collectively “Petitioners”),
`and Cellspin Soft, Inc. (“Patent Owner”). The call was requested in an email
`dated November 24, 2019, from Patent Owner. In the email, Patent Owner
`requested a briefing schedule for filing a Response to the Institution
`
`
`1 This caption is not authorized for use by the parties.
`
`2
`
`
`
`IPR2019-00127, -00131, -01107, -01108
`Patent 9,258,698 B2
`
`Decisions (“Decisions”) filed in the ’1107 and ’1108 IPRs. ’1107 IPR, Paper
`19; ’1108 IPR, Paper 15.
`During the call, it was determined that Patent Owner misunderstood
`the claim construction standard that applies in the joined proceedings. Patent
`Owner understood that the claim construction standard of Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) would be applied to further
`proceedings regarding the ’1107 and ’1108 IPRs. This is contrary to the
`Decisions, in which we explained that the broadest reasonable interpretation
`(“BRI”) standard would be applied to the joined proceedings. ’1107 IPR,
`Paper 19, 9–10 n.11, 29; ’1108 IPR, Paper 15, 8 n.6, 35. The preceding
`portions of the Decisions were identified for Patent Owner. The Board
`restated that the ’1107 and ’1108 IPR Petitioners are now joined respectively
`to the ’127 and ’131 IPRs under the BRI standard for claim construction.
`See, e.g., ’1107 IPR, Paper 19, 29 (stating that “the ’1107 Petitioners are
`joined as parties to the ’127 IPR, in which the BRI claim construction
`standard applies”).
`After confirming its misunderstanding, Patent Owner stated that it
`would not need to file Responses to the petitions in the ’1107 and ’1108
`IPRs. Patent Owner’s request for a briefing schedule is therefore moot.
`Patent Owner stated it may want to file an objection to proceeding
`under BRI. Patent Owner was directed to the Decisions for the requirements
`for filing any paper not authorized by the governing statute or rules. See
`’1107 IPR, Paper 19, 26 n.23; ’1108 IPR, Paper 15, 33 n.19. Petitioners had
`nothing further to add. No order is made in connection with the call.
`
`
`
`
`3
`
`
`
`IPR2019-00127, -00131, -01107, -01108
`Patent 9,258,698 B2
`
`’127 PETITIONER:
`
`Jared Newton
`QUINN EMANUEL URQUHART & SULLIVAN
`jarednewton@quinnemaneul.com
`
`’131 PETITIONER:
`
`Timothy V. Pearce, Jr.
`Christopher J. Higgins
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`tvpptabdocket@orrick.com
`0chptabdocket@orrick.com
`
`’1107, ’1108 PETITIONER:
`
`David Xue
`RIMÔN LAW
`david.xue@rimonlaw.com
`
`Jennifer C. Bailey
`Adam P. Seitz
`ERISE IP, P.A.
`jennifer.bailey@eriseip.com
`adam.seitz@eriseip.com
`
`PATENT OWNER:
`
`John J. Edmonds
`Stephen F. Schlather
`EDMONDS & SCHLATHER, PLLC
`pto-edmonds@ip-lit.com
`sschlather@ip-lit.com
`
`Eric Carr
`COLLINS EDMONDS & SCHLATHER, PLLC
`ecarr@ip-lit.com
`
`
`4
`
`
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