Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 11
`Entered: August 6, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`____________
`
`Case CBM2015-00118
`Patent 7,334,720 B2
`____________
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review and Grant of Motion
`for Joinder
`37 C.F.R. § 42.208
`37 C.F.R. § 42.222(b)
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 11
`Entered: August 6, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`____________
`
`Case CBM2015-00118
`Patent 7,334,720 B2
`____________
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review and Grant of Motion
`for Joinder
`37 C.F.R. § 42.208
`37 C.F.R. § 42.222(b)
`
`
`
`
`
`
`CBM2015-00118
`Patent 7,334,720 B2
`
`
`I. INTRODUCTION
`
`Petitioner, Apple Inc. (“Apple”), filed a Petition requesting covered
`
`business method patent review of claims 13 and 14 (the “challenged
`
`claims”) of U.S. Patent No. 7,334,720 (Ex. 1001, “the ’720 patent”) (Paper
`
`2, “Pet.”). On June 1, 2015, Patent Owner, Smartflash LLC (“Smartflash”),
`
`filed a Preliminary Response (Paper 7, “Prelim. Resp.”).
`
`We have jurisdiction under 35 U.S.C. § 324, which provides that a
`
`covered business method patent review may not be instituted “unless . . . it is
`
`more likely than not that at least 1 of the claims challenged in the petition is
`
`unpatentable.”
`
`Concurrently with its Petition, Apple filed a Motion for Joinder (Paper
`
`3, “Mot.”), seeking to consolidate this case, under 35 U.S.C. § 325(c), with
`
`the covered business method patent review in Samsung Electronics America,
`
`Inc. v. Smartflash, LLC, Case CBM2014-00190 (“the Samsung CBM”),
`
`which was instituted on April 2, 2015. See CBM2014-00190 (Paper 9, 18)
`
`(instituting review of claims 13 and 14 of the ’720 patent under 35 U.S.C.
`
`§ 101). Smartflash does not oppose Apple’s Motion for Joinder.
`
`Paper 10, 1.
`
`For the reasons explained below, we institute covered business
`
`method patent review of claims 13 and 14 of the ’720 patent and grant
`
`Apple’s Motion for Joinder.
`
`II. INSTITUTION OF COVERED BUSINESS METHOD PATENT
`REVIEW ON SAME GROUND ASSERTED IN THE SAMSUNG
`CBM
`
`In view of the identity of the challenge in the instant Petition and that
`
`instituted in CBM2014-00190, we determine that it is more likely than not
`
`2
`
`
`
`CBM2015-00118
`Patent 7,334,720 B2
`
`that Petitioner will prevail on its challenge that claims 13 and 14 of the ’720
`
`patent are unpatentable. We previously have determined that the ’720 patent
`
`is a “covered business method patent.” AIA § 18(d)(1); see 37 C.F.R.
`
`§ 42.301(a); see also CBM2014-00104, Paper 9, 8–13 (determining that the
`
`’720 patent is eligible for covered business method patent review based on
`
`claim 14); CBM2014-00105, Paper 9, 8–13 (determining that the ’720 patent
`
`is eligible for covered business method patent review based on claim 14);
`
`CBM2014-00190, Paper 9, 7–11 (determining that the ’720 patent is eligible
`
`for covered business method patent review based on claim 14); CBM2014-
`
`00196, Paper 9, 7–11 (determining that the ’720 patent is eligible for
`
`covered business method patent review based on claim 14); CBM2015-
`
`00028, Paper 11, 5–10 (determining that the ’720 patent is eligible for
`
`covered business method patent review based on claim 2); CBM2015-
`
`00029, Paper 11, 6–11 (determining that the ’720 patent is eligible for
`
`covered business method patent review based on claim 14).
`
`Smartflash argues that “Petitioner cites claim 14 as an example of the
`
`’720 Patent being a covered business method review in its request that CBM
`
`review be instituted,” but “claim 14 does not, in fact, meet the requirements
`
`for instituting a review.” Prelim. Resp. 10. As noted above, however, the
`
`’720 patent already has been determined to be a covered business method
`
`patent based on claim 14, and Smartflash fails to identify error in that
`
`determination. Further, as also noted above, we previously have determined
`
`that the ’720 patent contains at least one other claim meeting the covered
`
`business method patent review requirements (e.g., claim 2). See Transitional
`
`Program for Covered Business Method Patents—Definitions of Covered
`
`Business Method Patent and Technological Invention; Final Rule, 77 Fed.
`
`3
`
`
`
`CBM2015-00118
`Patent 7,334,720 B2
`
`Reg. 48,734, 48,736 (Aug. 14, 2012) (“CBM Rules”) (Comment 8) (a patent
`
`need have only one claim directed to a covered business method to be
`
`eligible for review).
`
`Here, Apple challenges the same claims (claims 13 and 14), based
`
`upon the same ground, 35 U.S.C. § 101, for which covered business method
`
`patent review was instituted in the Samsung CBM. Pet 14–29; Mot. 8. We
`
`have reviewed the Preliminary Response presented by Smartflash and are
`
`not persuaded that we should deny institution in this proceeding. In its
`
`Preliminary Response, Smartflash does not attempt to rebut Apple’s
`
`contentions regarding the unpatentability of claims 13 and 14 under 35
`
`U.S.C. § 101. Rather, Smartflash argues that the Petition should be denied
`
`because it disregards the Board’s exercise of discretion under 35 U.S.C.
`
`§ 325(d) to decline to institute CBM patent review in CBM2015-00029
`
`(Prelim. Resp. 4–6) and “would be contrary to the PTAB’s mandate” of
`
`securing the just, speedy, and inexpensive “resolution of the issues
`
`surrounding the ’720 patent” (id. at 7). These arguments are not persuasive.
`
`We declined to institute CBM review of claim 13 and 14 in CBM-
`
`00029 because claims 13 and 14 because we had already instituted review of
`
`these claims on § 101 grounds in the Samsung CBM (CBM2015-00029,
`
`Paper 11, 15). In its Motion for Joinder, Apple requests that it
`
`be permitted to join the Samsung CBM proceedings to ensure
`that the earlier proceeding on claims 13 and 14 proceeds
`through to a final written decision regardless of whether
`Samsung seeks to terminate its involved in CBM2014-000190
`(e.g., as a result of settlement).
`
`Mot. 7–8. Apple notes that in this proceeding, the “petition does not assert
`
`any new grounds of unpatentability. It involves the same ’720 patent and—
`
`4
`
`
`
`CBM2015-00118
`Patent 7,334,720 B2
`
`as discussed above—the same arguments, evidence and grounds of
`
`unpatentability as the Board instituted in CBM2014-00190.” Id. at 8. Apple
`
`further states that “[a]lthough it otherwise presents the same arguments as
`
`the Samsung CBM Petition, the Apple Petition here removes grounds on
`
`which the Board did not institute in CBM2014-00190, and Apple does not
`
`assert those grounds in its concurrently filed petition.” Id. Apple further
`
`notes that it has “re-filed the same expert declaration submitted by Samsung,
`
`and so this declaration contains no material that is not already in the
`
`previously-filed declaration” and “a second deposition of a second expert is
`
`not necessary.” Id. at 8–9.
`
`Based on the specific facts of this case, we institute a covered
`
`business method patent review in this proceeding on the same ground,
`
`namely under 35 U.S.C. § 101, as that on which we instituted in the
`
`Samsung CBM for claims 13 and 14 of the ’720 patent. We do not institute
`
`a covered business method patent review on any other ground.
`
`III. GRANT OF MOTION FOR JOINDER
`
`As noted above, Smartflash does not oppose Apple’s request to
`
`consolidate this Petition with the Samsung CBM. Paper 10, 1.
`
`As noted above, the only ground upon which we institute a covered
`
`business method patent review in this proceeding is the challenge to claims
`
`13 and 14 of the ’720 patent based on 35 U.S.C. § 101. Apple, thus, does
`
`not assert any new ground of unpatentability that is not already being
`
`considered in the Samsung CBM. Mot. 8. Further, as noted above, Apple
`
`represents that the Petition includes the same arguments and relies on the
`
`same evidence and grounds of unpatentability that were the basis for the
`
`Board’s decision to institute trial in the Samsung CBM. Id. at 8–9.
`
`5
`
`
`
`CBM2015-00118
`Patent 7,334,720 B2
`
`
`Under the circumstances, we conclude Apple has demonstrated that
`
`consolidation of the two cases will not unduly complicate or delay the
`
`Samsung CBM, and therefore, we grant Apple’s Motion for Joinder to
`
`consolidate this proceeding with the Samsung CBM. All filings in the
`
`consolidated proceeding will be made by Samsung Electronics America,
`
`Inc., and Samsung Electronics Co., Ltd. (“Samsung”) on behalf of Samsung
`
`and Apple. Apple shall not file any separate papers or briefing in these
`
`consolidated proceedings without authorization from the Board. In addition,
`
`Apple shall not seek any additional discovery beyond that sought by
`
`Samsung.
`
`Samsung and Apple shall resolve any disputes between them
`
`concerning the conduct of the consolidated proceedings and contact the
`
`Board if any such matters cannot be resolved. No additional burdens shall
`
`be placed on Smartflash as a result of the consolidation.
`
`In consideration of the above, we institute a covered business method
`
`patent review in CBM2015-00118 and grant Apple’s Motion for Joinder.
`
`Accordingly, it is
`
`IV. ORDER
`
`ORDERED that the challenge to claims 13 and 14 in CBM2015-
`
`00118, as unpatentable under 35 U.S.C. § 101, is instituted;
`
`FURTHER ORDERED that this proceeding is consolidated with
`
`CBM2014-00190;
`
`FURTHER ORDERED that the ground on which CBM2014-00190
`
`was instituted is unchanged, and no other grounds are instituted in the
`
`consolidated proceeding;
`
`6
`
`
`
`CBM2015-00118
`Patent 7,334,720 B2
`
`
`FURTHER ORDERED that the Scheduling Order in place for
`
`CBM2014-00190 shall govern the consolidated proceeding;
`
`FURTHER ORDERED that, throughout the consolidated proceeding,
`
`any paper, except for a motion that does not involve the other party, shall be
`
`filed by Samsung, as a single, consolidated filing on behalf of Samsung and
`
`Apple, and Samsung will identify each such filing as a consolidated filing;
`
`FURTHER ORDERED that except as otherwise agreed by counsel,
`
`Samsung will conduct cross-examination and other discovery on behalf of
`
`Samsung and Apple, and that Smartflash is not required to provide separate
`
`discovery responses or additional deposition time as a result of the
`
`consolidation;
`
`FURTHER ORDERED that CBM2015-00118 is terminated under
`
`37 C.F.R. § 42.72, and all further filings in the consolidated proceeding are
`
`to be made in CBM2014-00190;
`
`FURTHER ORDERED that a copy of this Decision will be entered
`
`into the record of CBM2014-00190 and CBM2015-00118; and
`
`FURTHER ORDERED that the case caption in CBM2014-00190
`
`shall be changed to reflect consolidation with this proceeding in accordance
`
`with the attached example.
`
`
`
`7
`
`
`
`CBM2015-00118
`Patent 7,334,720 B2
`
`
`
`
`FOR PETITIONER:
`
`J. Steven Baughman
`Ching-Lee Fukuda
`Megan F. Raymond
`Ropes & Gray LLP
`steven.baughman@ropesgray.com
`Ching-Lee.Fukuda@ropesgray.com
`megan.raymond@ropesgray.com
`
`
`
`FOR PATENT OWNER:
`
`Michael Casey
`Wyane Helge
`Davidson Berquist Jackson & Gowdey, LLP
`smartflash-cbm@dbjg.com
`whelge@dbjg.com
`
`
`
`8
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SAMSUNG ELECTRONICS LTD, SAMSUNG ELECTRONICS
`AMERICA, INC., and APPLE INC.
`Petitioner,
`
`v.
`
`SMARTFLASH LLC
`Patent Owner.
`____________
`
`Case CBM2014-001901
`Patent 7,334,720 B2
`____________
`
`
`
`
`
`
`
`
`
`
`1 CBM2015-00118 has been consolidated with this proceeding.
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