Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 53
`Entered: June 10, 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 CBM2014-001941
`Patent 8,118,221 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`1 CBM2015-00117 (Patent 8,118,221 B2) has been consolidated with this
`proceeding.
`
`
`Tel: 571-272-7822
`
`Paper 53
`Entered: June 10, 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 CBM2014-001941
`Patent 8,118,221 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`1 CBM2015-00117 (Patent 8,118,221 B2) has been consolidated with this
`proceeding.
`
`
`
`CBM2014-00194
`Patent 8,118,221 B2
`
`INTRODUCTION
`Samsung Electronics America, Inc., Samsung Electronics Co., Ltd.,
`and Samsung Telecommunications America, LLC (“Samsung”),2 filed a
`Corrected Petition to institute covered business method patent review of
`claims 2, 11, and 32 of U.S. Patent No. 8,118,221 B2 (Ex. 1001, “the ’221
`patent”) pursuant to § 18 of the Leahy-Smith America Invents Act (“AIA”).3
`Paper 4 (“Pet.”). On March 30, 2015, we instituted a covered business
`method patent review (Paper 9, “Institution Decision” or “Inst. Dec.”) based
`upon Samsung’s assertion that claims 2, 11, and 32 are directed to patent
`ineligible subject matter under 35 U.S.C. § 101. Inst. Dec. 19.
`On April 30, 2015, Apple Inc. (“Apple”) filed a Petition to institute
`covered business method patent review of the same claims of the ’221 patent
`based on the same grounds. Apple Inc. v. Smartflash LLC, Case CBM2015-
`00117 (Paper 2, “Apple Pet.”). Apple simultaneously filed a “Motion for
`Joinder” of its newly filed case with Samsung’s previously instituted case.
`CBM2015-00117 (Paper 3, “Apple Mot.”). On August 8, 2015, we granted
`Apple’s Petition and consolidated the two proceedings. Paper 32; Apple Inc.
`v. Smartflash LLC, Case CBM2015-00117, slip. op. at 6–7 (PTAB Aug. 8,
`2015) (Paper 11).
`Subsequent to institution, Smartflash LLC (“Patent Owner”) filed a
`Patent Owner Response (Paper 23, “PO Resp.”) 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 8.
`3 Pub. L. No. 112-29, 125 Stat. 284, 296–07 (2011).
`
`2
`
`
`
`CBM2014-00194
`Patent 8,118,221 B2
`
`(collectively, “Petitioner”) filed a Reply (Paper 31, “Reply”) to Patent
`Owner’s Response.
`In our Final Decision, we determined that Petitioner had established,
`by a preponderance of the evidence, that claim 32 (“the challenged claim”)
`of the ’221 patent is unpatentable.4 Paper 51 (“Final Dec.”), 30.
`Patent Owner requests rehearing of the Final Decision. Paper 52
`(“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 32 is directed to patent-ineligible subject matter.
`Req. Reh’g 2. In its Request, Patent Owner presents arguments directed to
`
`
`4 Claims 2 and 11 were canceled in a Final Written Decision of another
`proceeding—CBM2014-00102. Apple Inc. v. Smartflash LLC, Case
`CBM2014-00102, (PTAB Sept. 25, 2015) (Paper 52). Because the Federal
`Circuit dismissed Patent Owner’s appeal of that decision, leaving claims 2
`and 11 cancelled, we did not address those claims in the Final Written
`Decision of this proceeding. Final Dec. 3–4.
`
`3
`
`
`
`CBM2014-00194
`Patent 8,118,221 B2
`
`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 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 “the
`issue of whether the claim was similar to those in DDR Holdings was
`previously addressed. See PO Resp. 12–13.” Request 7 n.2. Similarly, in
`Patent Owner’s arguments regarding Alice, Patent Owner simply notes that
`“the issue of whether Claim 32 is an abstract idea was previously addressed.
`See 37 C.F.R. § 42.71(d); PO Resp. 11–28; see also Tr. 46:21–47:11” (id. at
`11 n.4) and “the issue of whether the Claim 32 contains ‘additional features’
`was previously addressed. See 37 C.F.R. § 42.71(d); PO Resp. 8–9; 25–36”
`(id. at 12 n.6). These generic citations to large portions of the record do not
`identify, with any particularity, specific arguments that we may have
`misapprehended or overlooked.
`
`4
`
`
`
`CBM2014-00194
`Patent 8,118,221 B2
`
`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
`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 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 Final Dec. 15) (“The Board
`rejected Patent Owner’s reliance on DDR Holdings (at 15), holding that
`Claim 7 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 10–13 and 18–20 of our Final Decision,
`Patent Owner’s arguments about preemption (Req. Reh’g. 6–7) were
`addressed at pages 20–22 of our Final Decision, and Patent Owner’s
`arguments about DDR Holdings (Req. Reh’g. 7–10) were addressed at pages
`
`5
`
`
`
`CBM2014-00194
`Patent 8,118,221 B2
`
`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.
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that Patent Owner’s Request is denied.
`
`
`
`PETITIONER:
`Walter Renner
`Thomas Rozylowicz
`Fish & Richardson P.C.
`axf@fr.com
`cbm39843-0006cp1@fr.com
`
`PATENT OWNER:
`
`Michael Casey
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
` smartflash-cbm@dbjg.com
`
`6
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