UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`SAMSUNG ELECTRONICS LTD, SAMSUNG ELECTRONICS
`AMERICA, INC., and APPLE INC.,
`
`Petitioners,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`Case CBM2014-001941
`
`Patent 8,116,221 B2
`
`________________________
`
`
`
`
`
`PATENT OWNER’S MOTION TO TERMINATE
`AS TO CLAIMS 2 AND 11
`
`
`
`1 CBM2015-00117 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.
`
`
`
`
`________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`SAMSUNG ELECTRONICS LTD, SAMSUNG ELECTRONICS
`AMERICA, INC., and APPLE INC.,
`
`Petitioners,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`Case CBM2014-001941
`
`Patent 8,116,221 B2
`
`________________________
`
`
`
`
`
`PATENT OWNER’S MOTION TO TERMINATE
`AS TO CLAIMS 2 AND 11
`
`
`
`1 CBM2015-00117 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.
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
`
`I.
`
`
`
`INTRODUCTION AND STATEMENT OF PRECISE RELIEF
`
`INTRODUCTION AND STATEMENT OF PRECISE RELIEF
`REQUESTED ................................................................................................. 1
`REQUESTED ............................................................................................... ..1
`
`II.
`
` STATEMENT OF REASONS FOR THE RELIEF REQUESTED ......... 2
`STATEMENT OF REASONS FOR THE RELIEF REQUESTED ....... ..2
`
`III. CONCLUSION .............................................................................................. 3
`
`CONCLUSION ............................................................................................ ..3
`
`III.
`
`
`
`
`
`
`
`
`
`i
`
`
`
`Exhibit Number
`
`PATENT OWNER’S LIST OF EXHIBITS
`Exhibit Description
`
`2001
`
`2002
`
`Congressional Record - House, June 23, 2011, H4480-4505
`
`Congressional Record - Senate, Sep. 8, 2011, S5402-5443
`
`2003-2023
`
`Reserved
`
`2024
`
`Samsung’s Motion To Stay Litigation Pending CBM Review
`
`2025-2048
`
`Reserved
`
`2049
`
`2050
`
`Report and Recommendation (on Defendants’ Motions for
`Summary Judgment of Invalidity Pursuant to 35 U.S.C. 101),
`from Smartflash LLC et al. v. Apple, Inc., et al., Case No.
`6:13-CV-447 (E.D. Tex.) and Smartflash LLC et al. v.
`Samsung Electronics Co. Ltd, et al., Case No. 6:13-CV-448
`(E.D. Tex.), dated Jan. 21, 2015
`
`Order adopting Report and Recommendation (on
`Defendants’ Motions for Summary Judgment of Invalidity
`Pursuant to 35 U.S.C. 101), from Smartflash LLC et al. v.
`Apple, Inc., et al., Case No. 6:13-CV-447 (E.D. Tex.) and
`Smartflash LLC et al. v. Samsung Electronics Co. Ltd, et al.,
`Case No. 6:13-CV-448 (E.D. Tex.), dated Feb. 13, 2015
`
`2051-2054
`
`Reserved
`
`2055
`
`Deposition Transcript of Jeffrey A. Bloom dated May 19,
`2015
`
`2056
`
`Non-Confidential Portion of Deposition Transcript of Jeffrey
`
`ii
`
`
`
`2057
`
`2057
`
`2058
`
`A. Bloom dated May 20, 2015
`
`Confidential Portion of Deposition Transcript of Jeffrey A.
`Bloom dated May 20, 2015
`
`Redacted Public Version of the Deposition Transcript of
`Jeffrey A. Bloom dated May 20, 2015, Pursuant to Order,
`Paper 28.
`
`Memorandum Opinion and Order (on Defendants’ Motions
`for Stay Pending the Outcome CBMs) from Smartflash LLC
`et al. v. Apple, Inc., et al., Case No. 6:13-CV-447 (E.D.
`Tex.), Smartflash LLC et al. v. Samsung Electronics Co. Ltd,
`et al., Case No. 6:13-CV-448 (E.D. Tex.), Smartflash LLC et
`al. v. Google, Inc., et al., Case No. 6:14-CV-435 (E.D. Tex.),
`and Smartflash LLC et al. v. Amazon, Inc., et al., Case No.
`6:14-CV-992 (E.D. Tex.) dated May 29, 2015
`
`2059-2062
`
`Reserved
`
`2063
`
`Civil Docket Report from Smartflash LLC et al. v. Samsung
`Electronics Co. Ltd, et al., Case No. 6:13-CV-448 (E.D.
`Tex.)
`
`2064-2066
`
`Reserved
`
`2067
`
`Declaration of Emily E. Toohey in Support of Patent
`Owner’s Response
`
`2068-2096
`
`Reserved
`
`iii
`
`
`
`2097
`
`Patent Owner’s Objections to Admissibility of Evidence
`
`2098-2116
`2117
`
`Reserved
`Smartflash LLC v. Apple Inc., Order, Cases 16-1435, -1445,
`1446, 1447 (Fed. Cir. March 4, 2016)
`
`
`
`iv
`
`
`
`I.
`
`INTRODUCTION AND STATEMENT OF PRECISE RELIEF
`REQUESTED
`
`Patent Owner Smartflash LLC hereby moves to terminate this Covered
`
`Business Method Review (“CBM Review”) of U.S. Patent 8,118,221 (“the ’221
`
`Patent”) as to claims 2 and 11 as moot. Smartflash was authorized to file this
`
`motion during a March 17, 2016 conference call with the Board. Paper 49 at 3.
`
`By Final Written Decision in CBM2014-00102 dated September 25, 2015
`
`the Board determined claims 2 and 11 of the ‘221 Patent to be unpatentable under
`
`35 U.S.C. § 103. Apple Inc. v. Smartflash LLC, CBM2014-00102, Final Written
`
`Decision, Paper 52 at 43 (PTAB September 25, 2015). In this CBM Review of the
`
`‘221 Patent, the Board instituted review of claims 2, 11, and 32 under 35 U.S.C.
`
`§ 101. Samsung Electronics America, Inc., et al., v. Smartflash LLC, CBM2014-
`
`00194, Decision - Institution of Covered Business Method Patent Review
`
`37 C.F.R. § 42.208, Paper 9 at 20 (PTAB March 30, 2015); Apple Inc. v.
`
`Smartflash LLC, CBM2015-00117, Decision – Instituting Covered Business
`
`Method Patent Review and Granting Motion for Joinder 37 C.F.R. § 42.208,
`
`37 C.F.R. § 42.222(b), Paper 11 at 6 (PTAB August 6, 2015).
`
`On March 4, 2016, pursuant to Fed. R. App. P. 42 (b), the United States
`
`Court of Appeals for the Federal Circuit dismissed Smartflash LLC’s appeal of the
`
`Board’s decision in CBM2014-00102 that claims 2 and 11 of the ‘221 Patent were
`
`unpatentable. Thus, claims 2 and 11 of the ‘221 Patent have been finally
`
`1
`
`
`
`adjudicated to be unpatentable. The eligibility of claims 2 and 11 of the ‘221
`
`Patent here in CBM2014-00194 is now moot. The Board should therefore
`
`terminate trial as to claims 2 and 11 of the ‘221 Patent without rendering a Final
`
`Written Decision on those claims pursuant to 37 C.F.R. § 42.72.
`
`II.
`
`STATEMENT OF REASONS FOR THE RELIEF REQUESTED
`
`On petitions filed by Samsung Electronics America, Inc. and Samsung
`
`Electronics Co., Ltd., and separately by Apple Inc., the Board instituted Covered
`
`Business Method review of claims 2, 11, and 32 of the ‘221 Patent on
`
`35 U.S.C. § 101 grounds in CBM2014-00194 (CBM2014-00194, Paper 9 at 20)
`
`and CBM2015-00117 (CBM2015-00117, Paper 11 at 6). The CBM2015-00117
`
`proceeding was consolidated with this CBM2014-00194 proceeding. Id.
`
`On a petition filed by Apple Inc., on September 25, 2015 the Board issued a
`
`Final Written Decision pursuant to 35 U.S.C. § 328(a) finding claims 1, 2, and 11-
`
`14 of the ‘221 Patent invalid on 35 U.S.C. § 103 grounds in CBM2014-00102.
`
`CBM2014-00102, Paper 52 at 43.
`
`On March 4, 2016, pursuant to Fed. R. App. P. 42 (b), the United States
`
`Court of Appeals for the Federal Circuit dismissed Smartflash LLC’s appeal of the
`
`Board’s decisions in CBM2014-00102 that claims 2 and 11 of the ‘221 Patent are
`
`unpatentable. Exhibit 2117, Smartflash LLC v. Apple Inc., Order, Cases 16-1435, -
`
`1445, 1446, 1447 (Fed. Cir. March 4, 2016).
`
`2
`
`
`
`Thus, claims 2 and 11 of the ‘221 Patent have been finally adjudicated to be
`
`unpatentable. The issue of the eligibility of claims 2 and 11 here is moot. The
`
`Board has authority under 37 C.F.R. § 42.72 to terminate this trial as to claims 2
`
`and 11 without rendering a Final Written Decision as to claims 2 and 11.
`
`Termination in this circumstance is consistent with 37 C.F.R. § 42.1(b)’s
`
`requirement that “[t]his part shall be construed to secure the just, speedy, and
`
`inexpensive resolution of every proceeding.”
`
`III. CONCLUSION
`For the forgoing reasons, Patent Owner Smartflash LLC respectfully
`
`requests that the Board terminate this trial as to the eligibility of claims 2 and 11 of
`
`the ‘221 Patent without rendering a Final Written Decision on those claims
`
` /
`
` Michael R. Casey /
`
`
`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
`
`
`pursuant to 37 C.F.R. § 42.72.
`
`Dated: March 18, 2016
`
`
`
`
`
`3
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that this PATENT OWNER’S MOTION
`
`TO TERMINATE AS TO CLAIMS 2 AND 11 (including Patent Owner’s List of
`
`Exhibits) and Exhibit 2117 in CBM2014-00194 were served, by agreement of the
`
`parties, March 18, 2016 by emailing copies to counsel for the Petitioners as
`
`follows:
`
`W. Karl Renner (renner@fr.com)
`Thomas Rozylowicz (rozylowicz@fr.com)
`CBM39843-0007CP1@fr.com
`
`J. Steven Baughman (steven.baughman@ropesgray.com)
`Ching-Lee Fukuda (ching-lee.fukuda@ropesgray.com)
`Megan Raymond (megan.raymond@ropesgray.com
`ApplePTABService-SmartFlash@ropesgray.com
`
`
` /
`
` Michael R. Casey /
`
`
`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
`
`
`
`4
`
`
`
`Dated: March 18, 2016
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