`Tel: 571-272-7822
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`Paper 11
`Entered: August 6, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`____________
`
`Case CBM2015-00119
`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
`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)
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`
`
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`
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`
`
`CBM2015-00119
`Patent 8,033,458 B2
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`I. INTRODUCTION
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`Petitioner, Apple Inc. (“Apple”), filed a Petition requesting covered
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`business method patent review of claim 11 (the “challenged claim”) of U.S.
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`Patent No. 8,033,458 (Ex. 1001, “the ’458 patent”) (Paper 2, “Pet.”). On
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`June 1, 2015, Patent Owner, Smartflash LLC (“Smartflash”), filed a
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`Preliminary Response (Paper 7, “Prelim. Resp.”).
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`We have jurisdiction under 35 U.S.C. § 324, which provides that a
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`covered business method patent review may not be instituted “unless . . . it is
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`more likely than not that at least 1 of the claims challenged in the petition is
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`unpatentable.”
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`Concurrently with its Petition, Apple filed a Motion for Joinder (Paper
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`3, “Mot.”), seeking to consolidate this case, under 35 U.S.C. § 325(c), with
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`the covered business method patent review in Samsung Electronics America,
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`Inc. and Samsung Electronics Co., Ltd. v. Smartflash, LLC, Case CBM2014-
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`00192 (“the Samsung CBM”), which was instituted on April 2, 2015. See
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`CBM2014-00192 (Paper 7, 19) (instituting review of claim 11 of the ’458
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`patent under 35 U.S.C. § 101). Smartflash does not oppose Apple’s Motion
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`for Joinder. Paper 10, 1.
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`For the reasons explained below, we institute covered business
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`method patent review of claim 11 of the ’458 patent and grant Apple’s
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`Motion for Joinder.
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`II. INSTITUTION OF COVERED BUSINESS METHOD PATENT
`REVIEW ON SAME GROUND ASSERTED IN THE SAMSUNG
`CBM
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`In view of the identity of the challenge in the instant Petition and that
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`instituted in CBM2014-00192, we determine that it is more likely than not
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`2
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`CBM2015-00119
`Patent 8,033,458 B2
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`that Petitioner will prevail on its challenge that claim 11 of the ’458 patent is
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`unpatentable. We previously have determined that the ’458 patent is a
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`“covered business method patent.” AIA § 18(d)(1); see 37 C.F.R.
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`§ 42.301(a); see also CBM2014-00192, Paper 7, 7–12 (determining that the
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`’458 patent is eligible for covered business method patent review based on
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`claim 11); CBM2014-00106, Paper 8, 9–13 (determining that the ’458 patent
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`is eligible for covered business method patent review based on claim 1);
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`CBM2015-00016, Paper 23, 12–16 (determining that the ’458 patent is
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`eligible for covered business method patent review based on claim 1).
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`Smartflash argues that “Petitioner has cited claim 11 as being the
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`basis for requesting that a covered business method review be instituted,”
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`but “claim 11 does not, in fact, meet the requirements for instituting a
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`review.” Prelim. Resp. 8. As noted above, however, the ’458 patent already
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`has been determined to be a covered business method patent based on claim
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`11, and Smartflash fails to identify error in that determination. Further, as
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`also noted above, we previously have determined that the ’458 patent
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`contains at least one other claim meeting the covered business method patent
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`review requirements (e.g., claim 1). See Transitional Program for Covered
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`Business Method Patents—Definitions of Covered Business Method Patent
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`and Technological Invention; Final Rule, 77 Fed. Reg. 48,734, 48,736 (Aug.
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`14, 2012) (“CBM Rules”) (Comment 8) (a patent need have only one claim
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`directed to a covered business method to be eligible for review).
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`Here, Apple challenges the same claim (claim 11), based upon the
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`same ground, 35 U.S.C. § 101, for which covered business method patent
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`review was instituted in the Samsung CBM. Pet 14–31; Mot. 8–9. We have
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`reviewed the Preliminary Response presented by Smartflash and are not
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`CBM2015-00119
`Patent 8,033,458 B2
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`persuaded that we should deny institution in this proceeding. In its
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`Preliminary Response, Smartflash does not attempt to rebut Apple’s
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`contentions regarding the unpatentability of claim 11 under 35 U.S.C. § 101.
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`Rather, Smartflash argues that the Petition should be denied because it
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`“disregards the Board’s exercise of discretion in CBM2015-00016” (Prelim.
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`Resp. 4) and “would be contrary to the PTAB’s mandate” of securing the
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`just, speedy, and inexpensive resolution of every proceeding (id. at 5).
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`These arguments are not persuasive.
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`As Apple notes (Mot. 7–8), we declined to institute CBM review of
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`claim 11 in CBM2015-00016 because we had already instituted review of
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`that claim on § 101 grounds in the Samsung CBM (CBM2015-00016, Paper
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`23, 20). In its Motion for Joinder, Apple requests that it
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`be permitted to join these proceedings to ensure that, even if
`Samsung should seek to terminate its involvement in
`CBM2014-00192 (e.g., as a result of settlement), Apple would
`be able to see the § 101 challenge to claim 11 through to a final
`written decision, since it was not permitted to do so in
`CBM2015-00016.
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`Mot. 8. Apple notes that in this proceeding, the “petition does not assert any
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`new grounds of unpatentability. It involves the same ’458 patent and—as
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`discussed above—the same arguments, evidence and grounds of
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`unpatentability as the Board instituted in CBM2014-00192.” Id. Apple
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`further notes that it has “re-filed the same expert declaration submitted by
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`Samsung, and so this declaration contains no material that is not already in
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`the previously-filed declaration” and “a second deposition of a second expert
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`is not necessary.” Id. at 9.
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`Based on the specific facts of this case, we institute a covered
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`business method patent review in this proceeding on the same ground,
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`4
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`CBM2015-00119
`Patent 8,033,458 B2
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`namely under 35 U.S.C. § 101, as that on which we instituted in the
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`Samsung CBM for claim 11 of the ’458 patent. We do not institute a
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`covered business method patent review on any other ground.
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`III. GRANT OF MOTION FOR JOINDER
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`As noted above, Smartflash does not oppose Apple’s request to
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`consolidate this Petition with the Samsung CBM. Paper 10, 1.
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`As noted above, the only ground upon which we institute a covered
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`business method patent review in this proceeding is the challenge to claim
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`11 of the ’458 patent based on 35 U.S.C. § 101. Apple, thus, does not assert
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`any new ground of unpatentability that is not already being considered in the
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`Samsung CBM. Mot. 8. Further, as noted above, Apple represents that the
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`Petition includes the same arguments and relies on the same evidence and
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`grounds of unpatentability that were the basis for the Board’s decision to
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`institute trial in the Samsung CBM. Id. at 8–9.
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`Under the circumstances, we conclude Apple has demonstrated that
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`consolidation of the two cases will not unduly complicate or delay the
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`Samsung CBM, and therefore, we grant Apple’s Motion for Joinder to
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`consolidate this proceeding with the Samsung CBM. All filings in the
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`consolidated proceeding will be made by Samsung Electronics America,
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`Inc., and Samsung Electronics Co., Ltd. (“Samsung”) on behalf of Samsung
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`and Apple. Apple shall not file any separate papers or briefing in these
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`consolidated proceedings without authorization from the Board. In addition,
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`Apple shall not seek any additional discovery beyond that sought by
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`Samsung.
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`Samsung and Apple shall resolve any disputes between them
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`concerning the conduct of the consolidated proceedings and contact the
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`5
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`CBM2015-00119
`Patent 8,033,458 B2
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`Board if any such matters cannot be resolved. No additional burdens shall
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`be placed on Smartflash as a result of the consolidation.
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`In consideration of the above, we institute a covered business method
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`patent review in CBM2015-00119 and grant Apple’s Motion for Joinder.
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`Accordingly, it is
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`IV. ORDER
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`ORDERED that the challenge to claim 11 in CBM2015-00119, as
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`unpatentable under 35 U.S.C. § 101, is instituted;
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`FURTHER ORDERED that this proceeding is consolidated with
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`CBM2014-00192;
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`FURTHER ORDERED that the ground on which CBM2014-00192
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`was instituted is unchanged, and no other grounds are instituted in the
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`consolidated proceeding;
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`FURTHER ORDERED that the Scheduling Order in place for
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`CBM2014-00192 shall govern the consolidated proceeding;
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`FURTHER ORDERED that, throughout the consolidated proceeding,
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`any paper, except for a motion that does not involve the other party, shall be
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`filed by Samsung as a single, consolidated filing on behalf of Samsung and
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`Apple, and Samsung will identify each such filing as a consolidated filing;
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`FURTHER ORDERED that except as otherwise agreed by counsel,
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`Samsung will conduct cross-examination and other discovery on behalf of
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`Samsung and Apple, and that Smartflash is not required to provide separate
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`discovery responses or additional deposition time as a result of the
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`consolidation;
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`6
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`CBM2015-00119
`Patent 8,033,458 B2
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`FURTHER ORDERED that CBM2015-00119 is terminated under
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`37 C.F.R. § 42.72, and all further filings in the consolidated proceeding are
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`to be made in CBM2014-00192;
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`FURTHER ORDERED that a copy of this Decision will be entered
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`into the record of CBM2014-00192 and CBM2015-00119; and
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`FURTHER ORDERED that the case caption in CBM2014-00192
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`shall be changed to reflect consolidation with this proceeding in accordance
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`with the attached example.
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`7
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`8
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`CBM2015-00119
`CBM2015—001 19
`Patent 8,033,458 B2
`Patent 8,033,458 B2
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`FOR PETITIONER:
`FOR PETITIONER:
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`FOR PATENT OWNER:
`FOR PATENT OWNER:
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
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`SAMSUNG ELECTRONICS LTD, SAMSUNG ELECTRONICS
`AMERICA, INC., and APPLE INC.
`Petitioner,
`
`v.
`
`SMARTFLASH LLC
`Patent Owner.
`____________
`
`Case CBM2014-001921
`Patent 8,033,458 B2
`____________
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`1 CBM2015-00119 has been consolidated with this proceeding.
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