Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 47
`Entered: June 9, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner
`
`and
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2014-001921
`Patent 8,033,458 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`1 CBM2015-00119 (Patent 8,033,458 B2) has been consolidated with this
`proceeding.
`
`
`Tel: 571-272-7822
`
`Paper 47
`Entered: June 9, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner
`
`and
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2014-001921
`Patent 8,033,458 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`1 CBM2015-00119 (Patent 8,033,458 B2) has been consolidated with this
`proceeding.
`
`
`
`CBM2014-00192
`Patent 8,033,458 B2
`
`INTRODUCTION
`Samsung Electronics America, Inc., Samsung Electronics Co., Ltd.,
`and Samsung Telecommunications America, LLC (“Samsung”)2 filed a
`Petition to institute covered business method patent review of claim 11 (the
`“challenged claim”) of U.S. Patent No. 8,033,458 B2 (Ex. 1001, “the ’458
`patent”) pursuant to § 18 of the Leahy-Smith America Invents Act (“AIA”).3
`Paper 2 (“Pet.”). On April 2, 2015, we instituted a transitional covered
`business method patent review (Paper 7, “Institution Decision” or “Inst.
`Dec.”) based upon Petitioner’s assertion that claim 11 is directed to patent
`ineligible subject matter under 35 U.S.C. § 101. Inst. Dec. 18.
`On April 30, 2015, Apple Inc. (“Apple”) filed a Petition to institute
`covered business method patent review of claim 11 of the ’458 patent based
`on the same ground. CBM2015-00119 (Paper 2, “Apple Pet.”). Apple
`simultaneously filed a “Motion for Joinder” of their newly filed case with
`Samsung’s previously instituted case. CBM2015-00119 (Paper 3, “Apple
`Mot.”). On August 6, 2015, we granted Apple’s Petition and consolidated
`the two proceedings.4 Paper 29; CBM2015-00119, Paper 11.
`Subsequent to institution, Smartflash LLC (“Patent Owner”) filed a
`Patent Owner Response (Paper 21, “PO Resp.”)5 and Samsung and Apple
`
`
`2 Samsung Telecommunications America, LLC, a petitioner at the time of
`filing, merged with and into Samsung Electronics America, Inc. as of
`January 1, 2015. Paper 6.
`3 Pub. L. No. 112-29, 125 Stat. 284, 296–07 (2011).
`4 For purposes of this decision, we will cite only to Samsung’s Petition.
`5 Paper 21 is the redacted version of the Patent Owner Response. Paper 20
`is the unredacted version of that Response.
`
`2
`
`
`
`CBM2014-00192
`Patent 8,033,458 B2
`
`(collectively, “Petitioner”) filed a Reply (Paper 28, “Pet. Reply”) to Patent
`Owner’s Response.
`In our Final Decision, we determined that Petitioner had established,
`by a preponderance of the evidence, that claim 11 of the ’458 patent is
`unpatentable. Paper 45 (“Final Dec.”), 27. Patent Owner requests rehearing
`of the Final Decision. Paper 46 (“Request” or “Req. Reh’g”). Having
`considered Patent Owner’s Request, we decline to modify our Final
`Decision.
`
`
`STANDARD OF REVIEW
`In covered business method review, the petitioner has the burden of
`showing unpatentability by a preponderance of the evidence. 35 U.S.C.
`§ 326(e). The standard of review for rehearing requests is set forth in 37
`C.F.R. § 42.71(d), which states:
`The burden of showing a decision should be modified lies with
`the party challenging the decision. The request must specifically
`identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously
`addressed in a motion, an opposition, or a reply.
`
`
`ANALYSIS
`Patent Owner’s Request is based on a disagreement with our
`determination that claim 11 (“the challenged claim”) is directed to patent-
`ineligible subject matter. Req. Reh’g 2. In its Request, Patent Owner
`presents arguments directed to alleged similarities between the challenged
`claim and those at issue in DDR Holdings, LLC v. Hotels.com, L.P., 773
`F.3d 1245 (Fed. Cir. 2014) (Req. Reh’g 5–10) and alleged differences
`
`3
`
`
`
`CBM2014-00192
`Patent 8,033,458 B2
`
`between the challenged claim and those at issue in Alice Corp. Pty. Ltd. v.
`CLS Bank Int’l., 134 S. Ct. 2347 (2014) (id. at 10–15).
`As noted above, our rules require that the requesting party
`“specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each matter was
`previously addressed in a motion, an opposition, or a reply.” 37 C.F.R.
`42.71(d) (emphasis added). In its Request, however, Patent Owner does not
`identify any specific matter that we misapprehended or overlooked. Rather,
`the only citation to Patent Owner’s previous arguments are general citations,
`without explanation as to how we misapprehended or overlooked any
`particular matter in the record. For example, with respect to Patent Owner’s
`arguments regarding DDR Holdings, Patent Owner simply notes that “[t]he
`issue of whether claim 11 was similar to the DDR Holdings claims was
`previously addressed. See 37 C.F.R. § 42.71(d); PO Resp. 11-12.” Request
`7 n.4. Similarly, in Patent Owner’s arguments regarding Alice, Patent
`Owner simply notes that “[t]he issue of whether claim 11 is directed to an
`abstract idea was previously addressed. See 37 C.F.R. § 42.71(d); PO Resp.
`10-27; see also Tr. 46:21-47:11.” (id. at 11 n.6) and “[t]he issue of whether
`claim 11 contains ‘additional features’ beyond an abstract idea was
`previously addressed. See 37 C.F.R. § 42.71(d); PO Resp. 11-12, 18-19” (id.
`at 12 n.8). These generic citations to large portions of the record do not
`identify, with any particularity, specific arguments that we may have
`misapprehended or overlooked.
`Rather than providing a proper request for rehearing, addressing
`particular matters that we previously misapprehended or overlooked, Patent
`Owner’s Request provides new briefing by expounding on argument already
`
`4
`
`
`
`CBM2014-00192
`Patent 8,033,458 B2
`
`made. Patent Owner cannot simply allege that an “issue” (e.g., whether the
`claims are directed to an abstract idea) was previously addressed, generally,
`and proceed to present new argument on that issue in a request for rehearing.
`See 37 C.F.R. § 42.71.
`Patent Owner’s arguments are either new or were addressed in our
`Final Decision. For example, Patent Owner’s argument that the challenged
`claims are not directed to an abstract idea (Req. Reh’g 10–12) is new, and
`therefore, improper in a request for rehearing, because Patent Owner did not
`argue the first step of the analysis articulated in Mayo and Alice in its Patent
`Owner Response (see Paper 21 (PO Resp.) passim (arguing only the second
`step of the Mayo and Alice test)). To the extent portions of the Request are
`supported by Patent Owner’s argument in the general citations to the record,
`we considered those arguments in our Final Decision, as even Patent Owner
`acknowledges. See, e.g., Req. Reh’g 7 (citing Fin. Dec. 16) (“The Board
`rejected Patent Owner’s reliance on DDR Holdings (at 16), holding that
`claim 11 was not ‘rooted in computer technology in order to overcome a
`problem specifically arising in the realm of computer networks.’”). For
`example, Patent Owner’s arguments about inventive concept (Req. Reh’g 5–
`7, 12–15) were addressed at pages 9–14 of our Final Decision, Patent
`Owner’s arguments about preemption (Req. Reh’g. 6–7) were addressed at
`pages 18–20 of our final Decision, and Patent Owner’s arguments about
`DDR Holdings (Req. Reh’g. 5–10) were addressed at pages 14–18 of our
`Final Decision. Mere disagreement with our Final Decision also is not a
`proper basis for rehearing.
`Accordingly, Patent Owner’s Request does not apprise us of sufficient
`reason to modify our Final Decision.
`
`5
`
`
`
`CBM2014-00192
`Patent 8,033,458 B2
`
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that Patent Owner’s Request is denied.
`
`
`
`PETITIONER:
`
`
`Walter Renner
`Thomas Rozylowicz
`Fish & Richardson P.C.
`axf@fr.com
`cbm39843-0005cp1@fr.com
`
`
`PATENT OWNER:
`
`Michael Casey
`Davidson Berquist Jackson & Gowdey
`smartflash-cbm@dbjg.com
`
`
`6
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