`571-272-7822
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` Paper 46
`Entered: March 22, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SAMSUNG ELECTRONICS AMERICA, INC. and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
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`v.
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`SMARTFLASH LLC,
`Patent Owner.
`
`Case
`CBM2014-00199
`U.S. Patent 8,118,221
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`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
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`ELLURU, Administrative Patent Judge.
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`DECISION
`Motion to Terminate
`37 C.F.R. § 42.72
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`CBM2014-00199
`U.S. Patent 8,118,221
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`Patent Owner Smartflash LLC moves to terminate the present
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`Covered Business Method review (“CBM review”) of U.S. Patent No. 8,118,
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`221 (“the ’221 patent”) as moot, upon authorization by the Board. Paper 45,
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`1; Paper 44, 3. The present CBM review is of claims 2 and 11 of the ’221
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`patent under 35 U.S.C. § 102. Paper 9, 13.
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`In a previous proceeding, CBM2014-00102, we issued a Final Written
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`Decision determining claims 2 and 11, among other claims, of the ’221 are
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`unpatentable under 35 U.S.C. § 103. CBM2014-00102, Paper 52, 43.
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`Patent Owner appealed our Final Written Decision to the Court of Appeals
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`for the Federal Circuit. The Federal Circuit, however, has since dismissed
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`the appeal. Ex. 2117. Thus, contends Patent Owner, because “claims 2 and
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`11 of the ’221 patent have been finally adjudicated to be unpatentable,” “the
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`issue of patentability of claims 2 and 11 [in the present CBM review] is
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`moot.” Paper 45, 2.
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`We are persuaded that the particular facts of this proceeding now
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`counsel termination. 37 C.F.R. § 42.72. Claims 2 and 11 of the ’221 patent
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`have been finally cancelled and any decision we might reach in this CBM
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`review regarding the patentability of these claims would be moot and purely
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`advisory. We do not see how the just, speedy, and inexpensive resolution of
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`every proceeding (37 C.F.R. § 42.1(b)) would be secured by rendering a
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`Final Written Decision in this case.
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`ORDER
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`Accordingly it is
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`ORDERED that Patent Owner’s motion to terminate this proceeding
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`is granted; and
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`FURTHER ORDERED that CBM2014-00199 is terminated.
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`2
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`CBM2014-00199
`U.S. Patent 8,118,221
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`PETITIONER:
`
`Walter Renner
`Thomas Rozylowicz
`FISH & RICHARDSON P.C.
`axf@fr.com
`CBM39843-0003CP1@fr.com
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`PATENT OWNER:
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`Michael R. Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`mcasey@dbjg.com
`jsd@dbjg.com
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`3