`
`Trials@uspto.gov
`571-272-7822 CBM2014-00199, Paper 44
`
`
`Entered: March 18, 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.
`
`Cases
`CBM2014-001941, CBM2014-00199 (Patent 8,118,221)
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, and
`JEREMY M. PLENZLER, Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 CBM2015-00117 (Patent 8,118,221 B2) has been consolidated with this
`proceeding. Apple has been dismissed as a Petitioner from CBM2014-
`00194 with respect to the review of claims 2 and 11. Paper 46, 8.
`
`
`
`CBM2014-00194 (Patent 8,118,221)
`CBM2014-00199 (Patent 8,118,221)
`On March 17, 2016, a teleconference was held between counsel for
`Petitioner Samsung Electronics America, Inc. and Samsung Electronics, Co.,
`Ltd. and Patent Owner Smartflash LLC., and Judges Jennifer Bisk, Rama
`Elluru, and Jeremy Plenzler. The teleconference was transcribed at the
`request of Patent Owner.
`
`In CBM2014-00194, we instituted a review of claims 2, 11 and 32 of
`U.S. Patent No. 8,118,221 (“the ’221 patent”). In CBM2014-00199, we
`instituted a review of claims 2 and 11 of the ’221 patent. We held the
`teleconference with the parties because claims 2 and 11, among other claims,
`were determined to be unpatentable in a Final Written Decision issued in
`CBM2014-00102, a decision which Patent Owner appealed to the Court of
`Appeals for the Federal Circuit. The Federal Circuit, however, has since
`dismissed this appeal. See CBM2015-00015, Ex. 2117; CBM2015-00015,
`Paper 58, 1. We, thus, asked for Petitioner’s and Patent Owner’s positions
`as to whether our review of the patentability of claims 2 and 11 in
`CBM2014-00194 and CBM2014-00199 is mooted by the dismissal of the
`appeal of the Final Written Decision in CBM2014-00102, and whether either
`party was seeking authorization to file a motion to terminate CBM2014-
`00194 and CBM2014-00199.
`
`Petitioner indicated that it was not seeking authorization to file a
`motion to terminate these cases because there was a public interest in our
`issuing Final Written Decisions in these proceedings. Petitioner, however,
`also stated that it would not oppose a motion to terminate these proceedings
`by Patent Owner. In addition, Petitioner stated that a motion for adverse
`judgment by Patent Owner pursuant to 37 C.F.R. § 42.73 might be
`appropriate.
`
`2
`
`
`
`CBM2014-00194 (Patent 8,118,221)
`CBM2014-00199 (Patent 8,118,221)
`
`Patent Owner stated that it was seeking authorization to file a motion
`to terminate these proceedings and that it was not seeking a motion for
`adverse judgment.
`
`Because we have previously determined in a Final Written Decision
`that claims 2 and 11 of the ’221 patent are unpatentable, and the appeal of
`that determination has been dismissed, we granted Patent Owner
`authorization to file a motion to terminate these proceedings. Petitioner
`stated that it would not oppose the motion. Petitioner agreed to file its
`motion to terminate by March 18, 2016, or to let the Board know that it
`could not meet that deadline by the same date.
`
`It is:
`ORDERED that Patent Owner’s request for authorization to file a
`motion to terminate CBM2014-00194 and CBM2014-00199 is granted;
`FURTHER ORDERED that Patent Owner’s motion to terminate shall
`be filed no later than March 18, 2016; and
`FURTHER ORDERED that Patent Owner shall file the transcript of
`the March 17, 2016, in the records of CBM2014-00194 and CBM2014-
`00199.
`
`3
`
`
`
`CBM2014-00194 (Patent 8,118,221)
`CBM2014-00199 (Patent 8,118,221)
`PETITIONER (DISMISSED):
`
`J. Steven Baughman
`Ching-Lee Fukuda
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`ching-lee.fukuda@ropesgray.com
`
`
`
`PETITIONER:
`
`Walter Renner
`Thomas Rozylowicz
`FISH & RICHARDSON P.C.
`axf@fr.com
`CBM39843-0003CP1@fr.com
`
`PATENT OWNER:
`
`Michael R. Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`mcasey@dbjg.com
`jsd@dbjg.com
`
`
`4
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