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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TIKTOK INC.
`Petitioner,
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`v.
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`CELLSPIN SOFT, INC.,
`Patent Owner
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`IPR2024-00768
`Patent 11,234,121
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`PETITIONER’S REPLY
`TO PATENT OWNER’S PRELIMINARY RESPONSE
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`I.
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`Case No. IPR2024-00768
`Attorney Docket No. 50048-0055IP1
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`PETITIONER’S SOTERA STIPULATION RENDERS PATENT
`OWNER’S FINTIV ANALYSIS MOOT
`The Sotera stipulation filed by TikTok, and notified to Cellspin, is controlling
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`to obviate a Fintiv analysis. TTI-1035. Director Vidal’s Interim Procedure for
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`Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court
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`Litigation is dispositive, stating “the PTAB will not discretionarily deny institution
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`in view of parallel district court litigation where a petitioner presents a stipulation
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`not to pursue in a parallel proceeding the same grounds or any grounds that could
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`have reasonably been raised before the PTAB.” TTI-1034. TikTok’s stipulation
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`makes precisely that representation, and “[u]nder the mandatory Fintiv guidance
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`discussed above, this stipulation is dispositive.” BMW v. Northstar, IPR2023-01017,
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`Paper 12, 10 (PTAB Dec. 8, 2023).
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`Here, Cellspin points out that reexaminations were subsequently filed for
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`patents other than the ’121 patent but fails to show that those reexaminations have
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`any relevance to this proceeding. POPR, 11-13. Indeed, the Board has granted
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`institution under similar facts. See Google LLC v. Proxense, LLC, IPR2024-00232,
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`Paper 10, 31-32 (PTAB July 24, 2024).
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`II. CELLSPIN’S §316(b) ARGUMENTS SHOULD BE REJECTED
`In the parallel District Court lititgation, Cellspin is asserting a patent that
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`should never have been granted. As the unwilling defendant in a patent lawsuit,
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`Case No. IPR2024-00768
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`TikTok availed its right as a member of the public to petition the Board to review
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`and ultimately cancel the asserted claims on the basis that they are unpatentable.
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`Cellspin now seeks to avoid Board review of a meritorious challenge to its patent
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`under 35 U.S.C. §316(b) on the basis that TikTok should be barred from access to
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`the PTAB. POPR, 21-31. Cellspin’s argument should be rejected for multiple
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`reasons.
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`First, the petition does not implicate §316(b), which concerns the Director’s
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`prescribing of regulations: “In prescribing regulations under this section, the
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`Director shall consider the effect of any such regulation on the economy, the
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`integrity of the patent system, the efficient administration of the Office, and the
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`ability of the Office to timely complete proceedings instituted under this chapter.”
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`35 U.S.C. §316(b). And yet, the §316(b) argument takes root in a single petition
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`against the asserted Cellspin patent. Nothing about the implicated petition is
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`inconsistent with the intent of Congress in making the same available to members of
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`the public that seek to challenge the patentability of a granted patent. It therefore
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`cannot be credibly disparaged as negatively affecting the “economy,” the “integrity
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`of the patent system,” or the “efficient administration of the Office.” At bottom, the
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`petition concerns Cellspin’s patent and demonstrates that Cellspin’s asserted patent
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`claims are unpatentable. More, nothing in this petition implicates TikTok’s
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`intellectual property, nor does the petition ask the Board to take any action
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`concerning TikTok. There is no basis for Cellspin to assert that TikTok is (or should
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`be) barred from seeking review of unjustifiably broad patent claims that have been
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`asserted against it in litigation.
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`Second, even assuming that §316(b) applies to institution decisions (rather
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`than regulation promulgation), Cellspin asks this Board to extend §316(b) to
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`considerations of “foreign policy” and “national security.” POPR, 21-31. There is
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`no justification for such an expansion, and Cellspin’s theory clearly goes far beyond
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`the statutory text. The evaluation of foreign policy and national security concerns
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`would involve an evidentiary review that is not provided for in the IPR procedures.
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`Even Cellspin admits that “such analysis is impossible to achieve at the case-by-case
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`adjudication level, and should rather occur through formal rulemaking to involve the
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`expertise of policy experts on all sides” and “national security and related policy
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`issues are unfamiliar in the Board’s day-to-day activities.” Id., 25-27. Moreover, IPR
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`proceedings benefit the domestic economy by clearing out invalid patents. That
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`public benefit is in no way affected by a bona fide petition by a party being sued for
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`patent infringement—regardless of who that party is. Cellspin alleges no ill intent
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`on the part of TikTok, and there is no allegation that TikTok is in any way trying to
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`game the system. On the contrary, Cellspin is asserting patent claims that TikTok
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`alleges are clearly unpatentable, and the public interest is clearly served by the PTAB
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`considering TikTok’s petition.
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`Case No. IPR2024-00768
`Attorney Docket No. 50048-0055IP1
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`Third, Cellspin relies on Declarations submitted by two alleged “experts” in
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`an unrelated IPR—two experts that Cellspin has not retained and that Cellspin has
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`not made available for deposition. POPR, 26-31 (citing IPR2021-00476, Paper 8).
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`Further, the “experts” do not purport to provide an analysis of foreign policy or
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`economics that the Board may find helpful, but instead provide unique and
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`subjective theories concerning how they believe the Patent Office should conduct
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`itself. Id. It would be improper for the Board to embrace such theories outside of
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`rulemaking after public notice and a comment period have been provided.
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`Fourth, assuming arguendo that these flawed theories are applied, Cellspin
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`fails their own “test” because, despite what Cellspin contends, the patent at issue is
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`not related to “Data Science and Storage.” POPR, 29. In fact, Cellspin admits
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`elsewhere that they abandoned their “mobile blogging service” for “host[ing] …
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`media” in January 2013. See http://www.cellspin.net/mplatform/. Cellspin’s “test”
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`requires technology relevant to the “Critical and Emerging Technologies list” to
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`deny institution, which they cannot demonstrate. POPR, 29.
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`III. THE PRIOR ART GROUNDS PERFORM THE RECITED ORDER
`OF OPERATION
`The POPR raises a claim construction issue pertaining to the recited order of
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`certain operations. POPR, 53-54. Without commenting on the merits of PO’s
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`constructions, Petioner notes that the prior art satisfies the order of certain
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`Attorney Docket No. 50048-0055IP1
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`operations. E.g., Petition, 17. The Petition proves that the Hiroishi-Kahn-Endsley-
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`Bluetooth combination teaches new-data is necessarily limited to data acquired after
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`establishing the short-range paired wireless connection [that is maintained
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`continuously]. E.g., Petition, 17, 38, 44, 61-64.
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`The POPR’s reliance on BIP (EX2015) to show non-obviousness of the claims
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`in view of the Hiroishi-Kahn-Endsley-Bluetooth combination is misplaced. POPR,
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`81-84. Hiroishi specifically discusses using Bluetooth to support remote control
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`operations between the mobile phone and the digital camera and transferring
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`instructions to the camera and transferring images and other data to the mobile
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`phone. E.g., Petition, 17, 30. And Bluetooth specifically describes pairing and
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`authentication. E.g., Petition, 34-36.
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`Date: August 16, 2024
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`Case No. IPR2024-00768
`Attorney Docket No. 50048-0055IP1
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` Respectfully submitted,
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`/Kim H. Leung/
`W. Karl Renner, Reg. No. 41,265
`Kim H. Leung, Reg. No. 64,399
`Steven Katz, Reg. No. 43,706
`Rishi Gupta, Reg. No. 64,768
`Ryan O’Connor, Reg. No. 60,254
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`T: 202-783-5070
`F: 877-769-7945
` Attorney for Petitioner
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`Case No. IPR2024-00768
`Attorney Docket No. 50048-0055IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(4), the undersigned certifies that on August 16,
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`2024, a complete and entire copy of this Petitioner’s Reply to Patent Owner’s
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`Preliminary Response was provided by email to Patent Owner by serving the email
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`correspondence addresses of record as follows:
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`M. Scott Fuller, Reg. No. 54,716
`119 W. Ferguson Street
`Tyler, Texas 75702
`Phone: (903) 705-7420
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`René A. Vazquez, Reg. No. 38,647
`18296 St. Georges Ct.
`Leesburg, VA 20176
`Phone: (703) 989-2244
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`sfuller@ghiplaw.com
`litigation@ghiplaw.com
`rvazquez@sinergialaw.com
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`/Crena Pacheco/
`Crena Pacheco
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`pacheco@fr.com
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`7
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