UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS AMERICA, INC. and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`SMARTFLASH LLC,
`Patent Owner.
`________________________
`Case CBM2014-00192
`Patent 8,033,458 B2
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`PATENT OWNER’S LIST OF PROPOSED MOTIONS
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`________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`SAMSUNG ELECTRONICS AMERICA, INC. and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`v.
`SMARTFLASH LLC,
`Patent Owner.
`________________________
`Case CBM2014-00192
`Patent 8,033,458 B2
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`PATENT OWNER’S LIST OF PROPOSED MOTIONS
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`Case CBM2014-00192
`Patent 8,033,458 B2
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`The Patent Trial and Appeal Board ("Board") has scheduled an initial
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`conference call for Tuesday, May 5, 2015 at 2 PM. Pursuant to the Office Patent
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`Trial Practice Guide, 77 Fed. Reg. 48756, 48765-66 (Aug. 14, 2012), Patent Owner
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`submits the following list of proposed motions it is currently considering filing.
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`This list is provided without prejudice to Patent Owner’s right to seek
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`authorization to file additional motions or to decide not to file the motions listed.
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`I. Motion for Routine Discovery
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`Patent Owner proposes to file a motion for routine discovery under 37 CFR
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`42.51(b)(1)(iii) to obtain documents from Petitioner related to any allegations by
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`Petitioner (1) that any of Petitioner’s products do not infringe the challenged claim
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`and (2) that acceptable non-infringing alternatives exist to the challenged claim,
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`including at least any expert report filed by Petitioner or on behalf of Petitioner in
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`the on-going litigation with Patent Owner in Case No. 6:13-cv-448, Smartflash
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`LLC and SmartFlash Tehnologies Limited v. Samsung Electronics Co., Ltd.,
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`Samsung Electronics America, Inc., Samsung Telecommunications America, LLC,
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`HTC Corporation, HTC America, Inc., Exedea, Inc., and Game Circus LLC. Any
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`such documents would be inconsistent with Petitioner’s arguments that the
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`challenged claim results in preemption as asserted by the Petition and should have
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`been served with the Petition.
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`Case CBM2014-00192
`Patent 8,033,458 B2
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`II. Motion for Stay of the Proceedings
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`Patent Owner presently proposes to file a Motion to Stay the proceedings in
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`light of the District Court’s ruling in favor of Patent Owner on patentability under
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`35 U.S.C. 101 in response to Petitioner’s Motion for Summary Judgment in Case
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`No. 6:13-cv-448, Smartflash LLC and SmartFlash Tehnologies Limited v. Samsung
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`Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung
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`Telecommunications America, LLC, HTC Corporation, HTC America, Inc.,
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`Exedea, Inc., and Game Circus LLC.
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`In addition, Patent Owner notes that Petitioner has recently filed requests for
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`rehearing in CBM2014-00200 and -00204. Should Patent Owner not file a Motion
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`to Stay the proceedings in light of the District Court’s ruling in favor of Patent
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`Owner on patentability under 35 U.S.C. 101, Patent Owner proposes to file a
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`Motion to extend the due dates of the present proceedings by a time sufficient to
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`allow the Board to rule on the requests for rehearing and coordinate the schedules
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`of the present proceeding and CBM2014-00200 and -00204, should they be
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`instituted, in order to allow for a single deposition of Petitioner’s declarant, Dr.
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`Bloom.
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`Case CBM2014-00192
`Patent 8,033,458 B2
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`III. Additional Topics for Discussion at Initial Conference Call
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`A.
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`Coordination of Other Proceedings
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`Patent Owner notes that the scheduled oral argument dates of (a)
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`CBM2014-00190, -00192, -00193, -00194 and -00199 and (b) CBM2015-00015
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`through -00018 are currently set as October 29, 2015 and November 9, 2015,
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`respectively. The proceedings for CBM2015-00015 through -00018 were
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`instituted less than a month ago, and Patent Owner may seek in those proceedings
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`to have the schedule of the present proceeding coordinated therewith.
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`B.
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`Coordination of Deposition Transcripts
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`Petitioner has filed a declaration in this proceeding and in multiple other
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`proceedings by the same declarant, Dr. Bloom. Patent Owner seeks the Board’s
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`permission (as it did in earlier CBM proceedings on patents in the same patent
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`family) to allow a single deposition to be taken of the declarant (and future
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`Case CBM2014-00192
`Patent 8,033,458 B2
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`declarants) such that a single deposition transcript can be used in all proceedings
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`(albeit filed separately in each proceeding).
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`/ Michael R. Casey /
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`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson
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`& Gowdey, LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7705
`Fax: (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
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`Dated: May 1, 2015
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`Case CBM2014-00192
`Patent 8,033,458 B2
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that this PATENT OWNER’S LIST OF
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`PROPOSED MOTIONS in CBM2014-00192 was served May 1, 2015, by
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`agreement of the parties, by emailing a copy to counsel for the Petitioner as
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`renner@fr.com, and
`rozylowicz@fr.com
`CBM39843-0005CP1@fr.com
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` /
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` Michael R. Casey /
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`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Drive, Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7705
`Fax: (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
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`6
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`follows:
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`Dated: May 1, 2015
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