Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 48 (CBM2014-00102)
` Paper 48 (CBM2014-00106)
` Paper 46 (CBM2014-00108)
`Paper 44 (CBM2014-00112)
`Entered: May 27, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Cases1
`CBM2014-00102 (Patent 8,118,221 B2)2
`CBM2014-00106 (Patent 8,033,458 B2)
`CBM2014-00108 (Patent 8,061,598 B2)
`CBM2014-00112 (Patent 7,942,317 B2)
`
`
`
`
`
`
`
`
`
`
`1 This order addresses issues that are the same in all four cases. We exercise
`our discretion to issue one order to be filed in each case. The parties,
`however, are not authorized to use this style heading in subsequent papers.
`2 Case CBM2014-00103 has been consolidated with CBM2014-00102; case
`CBM2014-00107 has been consolidated with CBM2014-00106; case
`CBM2014-00109 has been consolidated with CBM2014-00108; case
`CBM2014-00113 has been consolidated with CBM2014-00112.
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 48 (CBM2014-00102)
` Paper 48 (CBM2014-00106)
` Paper 46 (CBM2014-00108)
`Paper 44 (CBM2014-00112)
`Entered: May 27, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Cases1
`CBM2014-00102 (Patent 8,118,221 B2)2
`CBM2014-00106 (Patent 8,033,458 B2)
`CBM2014-00108 (Patent 8,061,598 B2)
`CBM2014-00112 (Patent 7,942,317 B2)
`
`
`
`
`
`
`
`
`
`
`1 This order addresses issues that are the same in all four cases. We exercise
`our discretion to issue one order to be filed in each case. The parties,
`however, are not authorized to use this style heading in subsequent papers.
`2 Case CBM2014-00103 has been consolidated with CBM2014-00102; case
`CBM2014-00107 has been consolidated with CBM2014-00106; case
`CBM2014-00109 has been consolidated with CBM2014-00108; case
`CBM2014-00113 has been consolidated with CBM2014-00112.
`
`
`
`CBM2014-00102 (Patent 8,118,221 B2)
`CBM2014-00106 (Patent 8,033,458 B2)
`CBM2014-00108 (Patent 8,061,598 B2)
`CBM2014-00112 (Patent 7,942,317 B2)
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`ORDER
`Request for Oral Argument
`
`
`
`Petitioner and Patent Owner have each requested an oral hearing for
`
`inter partes review proceeding CBM2014-00102, CBM2014-00106,
`
`CBM2014-00108, and CBM2014-00112 pursuant to 37 C.F.R. § 42.70.
`
`Papers 40 and 443. Upon consideration by the panel, the parties’ requests
`
`are granted. Specifically, the hearing will commence at 9:00 AM Eastern
`
`Standard Time, on June 9, 2015, on the ninth floor of Madison Building
`
`East, 600 Dulany Street, Alexandria, Virginia.
`
`Each party will have two hours of total time4 to present arguments on
`
`all four cases. The parties are free to divide the time among the four cases as
`
`they choose, and must make clear at all times for purposes of the transcript,
`
`the case(s) which they are discussing. Petitioner bears the ultimate burden
`
`of proof that Patent Owner’s claims at issue in this review are unpatentable
`
`and has the burden on its motion to exclude evidence. Petitioner will,
`
`therefore, begin by presenting its case regarding the challenged claims and
`
`
`3 Papers numbers refer to papers in CBM2014-00102.
`4 Patent Owner requested two hours per side for all four related cases. Paper
`44. Petitioner’s request did not specify an amount of time for argument.
`
`2
`
`
`
`CBM2014-00102 (Patent 8,118,221 B2)
`CBM2014-00106 (Patent 8,033,458 B2)
`CBM2014-00108 (Patent 8,061,598 B2)
`CBM2014-00112 (Patent 7,942,317 B2)
`
`grounds for which the Board instituted trial in the proceeding. Patent Owner
`
`will then respond to Petitioner’s arguments. Petitioner may reserve time to
`
`reply to arguments presented by Patent Owner. There is no motion to amend
`
`pending in any of the subject proceedings.
`
`The hearing will be open to the public for in-person attendance that
`
`will be accommodated on a first-come, first-served basis. The Board will
`
`provide a court reporter for the hearing, and the reporter’s transcript will
`
`constitute the official record of the hearing.
`
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served
`
`five (5) business days before the hearing. The parties are directed to St. Jude
`
`Medical, Cardiology Division, Inc. v. The Board of Regents of the University
`
`of Michigan, Case IPR2013-00041 (PTAB Jan. 27, 2014) (Paper 65),
`
`regarding the appropriate content of demonstrative exhibits. The Board
`
`expects that the parties will meet and confer in good faith to resolve any
`
`objections to demonstrative exhibits, but if such objections cannot be
`
`resolved the parties may file any objections to demonstratives with the
`
`Board at least two business days before the hearing. The objections should
`
`identify with particularity which portions of the demonstrative exhibits are
`
`subject to objection, include a copy of the objected-to portions, and include a
`
`one-sentence statement of the reason for each objection. No argument or
`
`further explanation is permitted. The Board will consider any objections and
`
`schedule a conference call if deemed necessary. Otherwise, the Board will
`
`reserve ruling on the objections. Any objection to demonstrative exhibits
`
`that is not timely presented will be considered waived.
`
`3
`
`
`
`CBM2014-00102 (Patent 8,118,221 B2)
`CBM2014-00106 (Patent 8,033,458 B2)
`CBM2014-00108 (Patent 8,061,598 B2)
`CBM2014-00112 (Patent 7,942,317 B2)
`
`
`The parties also shall provide the demonstrative exhibits to the Board
`
`at least two business days prior to the hearing by emailing them to
`
`Trials@uspto.gov. The parties shall not file any demonstrative exhibits in
`
`this case without prior authorization from the Board. A hard copy of the
`
`demonstratives should be provided to the court reporter at the hearing.
`
`The parties also should note that at least one member of the panel will
`
`be attending the hearing electronically from a remote location, and that if a
`
`demonstrative is not made fully available or visible to the judge participating
`
`in the hearing remotely, that demonstrative will not be considered. If the
`
`parties have questions as to whether demonstrative exhibits would be
`
`sufficiently visible and available to all of the judges, the parties are invited
`
`to contact the Board at (571) 272-9797. The parties are also reminded that
`
`the presenter must identify clearly and specifically each demonstrative
`
`exhibit (e.g., by slide or screen number) referenced during the hearing to
`
`ensure the clarity and accuracy of the reporter’s transcript and the ability of
`
`the judge participating in the hearing remotely to closely follow the
`
`presenter’s arguments.
`
`The Board expects lead counsel for each party to be present in person
`
`at the oral hearing. However, lead or backup counsel may present the party’s
`
`argument. If either party anticipates that its lead counsel will not be
`
`attending the oral argument, the parties should initiate a joint telephone
`
`conference with the Board no later than two business days prior to the oral
`
`hearing to discuss the matter.
`
`Questions regarding specific audio-visual equipment should be
`
`directed to the Board at (571) 272-9797. Requests for audio-visual
`
`4
`
`
`
`CBM2014-00102 (Patent 8,118,221 B2)
`CBM2014-00106 (Patent 8,033,458 B2)
`CBM2014-00108 (Patent 8,061,598 B2)
`CBM2014-00112 (Patent 7,942,317 B2)
`
`equipment are to be made five (5) days in advance of the hearing date. The
`
`request is to be sent to Trials@uspto.gov. If the request is not received
`
`timely, the equipment may not be available on the day of the hearing.
`
`5
`
`
`
`CBM2014-00102 (Patent 8,118,221 B2)
`CBM2014-00106 (Patent 8,033,458 B2)
`CBM2014-00108 (Patent 8,061,598 B2)
`CBM2014-00112 (Patent 7,942,317 B2)
`
`PETITIONER:
`
`J. Steven Baughman
`Ching-Lee Fukuda
`Megan Raymond
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`ching-lee.fukuda@ropesgray.com
`megan.raymond@ropesgray.com
`
`PATENT OWNER:
`
`Michael R. Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`mcasey@dbjg.com
`jsd@dbjg.com
`
`6
`
`
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