`Tel: 571-272-7822
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`
`
`Paper 13 (CBM2014-00190)
`Paper 11 (CBM2014-00192)
`Paper 11 (CBM2014-00193)
`Paper 14 (CBM2014-00194)
`Paper 14 (CBM2014-00199)
`Entered: May 6, 2015
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`SAMSUNG ELECTRONICS AMERICA, INC. and SAMSUNG
`ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Cases1
`CBM2014-00190 (Patent 7,334,720 B2)
`CBM2014-00192 (Patent 8,033,458 B2)
`CBM2014-00193 (Patent 8,061,598 B2)
`CBM2014-00194 (Patent 8,118,221 B2)
`CBM2014-00199 (Patent 8,118,221 B2)
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, GREGG I. ANDERSON,
`MATTHEW R. CLEMENTS, and PETER P. CHEN,
`Administrative Patent Judges.
`
`1 This order addresses issues that are the same in all identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties, however, are not authorized to use this style heading in subsequent
`papers, except the filing of the transcript for this teleconference.
`
`
`
`CBM2014-00190 (Patent 7,334,720 B2)
`CBM2014-00192 (Patent 8,033,458 B2)
`CBM2014-00193 (Patent 8,061,598 B2)
`CBM2014-00194 (Patent 8,118,221 B2)
`CBM2014-00199 (Patent 8,118,221 B2)
`ELLURU, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`An initial teleconference was held in these cases on May 5, 2015,
`among respective counsel for Petitioner Samsung Electronics America, Inc.,
`and Samsung Electronics Co., Ltd. (“Samsung”), Patent Owner Smartflash
`LLC (“Smartflash”), and Judges Elluru, Bisk, Clements, Anderson, and
`Chen. A court reporter transcribed the teleconference at the request of
`Smartflash.
`Smartflash submitted a list of proposed motions. Paper 12.2 Samsung
`
`did not submit such a list.
`
`Patent Owner requested authorization to file a motion for “routine
`discovery” under 37 C.F.R. § 42.51(b)(1)(iii)3 to obtain “documents from
`[Samsung] related to any allegations by [Samsung] (1) that any of
`[Samsung’s] products do not infringe the challenged claim[s] and (2) that
`acceptable non-infringing alternatives exist to the challenged claim[s].” Id.
`Smartflash argued that such documents are inconsistent with Samsung’s
`
`
`2 Paper numbers refer to papers in CBM2014-00190, unless otherwise
`indicated.
`3 Rule 42.51(b)(1)(iii) states in pertinent part that “[u]nless previously
`served, a party must serve relevant information that is inconsistent with a
`position advanced by the party during the proceeding concurrent with the
`filing of the documents or things that contains the inconsistency.”
`
`2
`
`
`
`CBM2014-00190 (Patent 7,334,720 B2)
`CBM2014-00192 (Patent 8,033,458 B2)
`CBM2014-00193 (Patent 8,061,598 B2)
`CBM2014-00194 (Patent 8,118,221 B2)
`CBM2014-00199 (Patent 8,118,221 B2)
`assertion in the petitions that the challenged claims result in preemption, and
`thus, should have been served with the petitions.
`We decided that Petitioner’s alleged evidence of non-infringement
`and non-infringing alternatives in the district court is not inconsistent with
`Samsung’s assertion in these cases that the challenged claims are
`unpatentable under 35 U.S.C. § 101. We noted, for example, that a different
`claim construction standard is applicable in the district court in determining
`infringement than the broadest reasonable interpretation standard we apply
`in determining patentability. Samsung also stated that the question of
`whether the challenged claims preempt a field is a question of “relative”
`preemption. Smartflash did not point us to any authority that an accused
`infringer who pleads in the alternative that the challenged claims are
`unpatentable under § 101, a question of law, is taking an inconsistent
`position with its non-infringement position. In addition, to the extent that
`Samsung’s assertion of non-infringement in district court is inconsistent with
`its assertion in these cases that the challenged claims are unpatentable under
`§ 101, Smartflash is already aware of such alleged inconsistency, and has the
`“evidence” that Samsung took such allegedly inconsistent positions. We are
`not persuaded that the details of Samsung’s non-infringement positions shed
`light on the § 101 issue.
`Smartflash next proposed moving to stay these proceedings in light of
`the district court’s ruling in favor of Smartflash on the patentability of the
`challenged claims under § 101. Smartflash argued that it is an improper use
`of Board resources to re-litigate issues that have been resolved in district
`court and that our rules direct us to conduct these proceedings in a speedy,
`
`3
`
`
`
`CBM2014-00190 (Patent 7,334,720 B2)
`CBM2014-00192 (Patent 8,033,458 B2)
`CBM2014-00193 (Patent 8,061,598 B2)
`CBM2014-00194 (Patent 8,118,221 B2)
`CBM2014-00199 (Patent 8,118,221 B2)
`efficient, and inexpensive manner. We decided that there is no justification
`to stay these proceedings given our statutory deadline to complete these
`proceedings within one-year of institution. See 35 U.S.C. § 326(a)(11). We
`noted that the parties cannot control the timing of the district court trial
`and/or possible subsequent appeal to the Federal Circuit, even if we were to
`extend the deadlines in these cases by up to six months. See id.
`Smartflash next proposed to file a motion to extend the due dates of
`the present proceedings by a time sufficient to allow the Board to rule on the
`requests for rehearing and coordinate the schedules of the present
`proceedings and CBM2014-00200 and CBM2014-00204, should those cases
`be instituted on rehearing. Smartflash stated that it was making such a
`request in order to allow for a single deposition of Petitioner’s declarant.
`We stated that we will issue decisions resolving the requests for rehearing in
`a prompt manner and should we institute trials in those cases, we will
`reconsider the relevant schedules at that time.
`Smartflash noted that the scheduled oral hearing dates of (a)
`CBM2014-00190, -192, -193, -194, and -199 and (b) CBM2015-00015, -16,
`-17, and -18, are currently October 29, 2015, and November 9, 2015,
`respectively. We stated that we will follow the current schedules of record
`in these proceedings and reconsider the oral hearing dates at a later time.
`Lastly, the parties agreed to take a single deposition of any declarant
`in all related cases such that a single deposition transcript can be used in all
`related proceedings, but filed separately in each proceeding. The parties also
`agreed to the length of deposition times for a declarant. We were amenable
`to both agreements by the parties.
`
`4
`
`
`
`CBM2014-00190 (Patent 7,334,720 B2)
`CBM2014-00192 (Patent 8,033,458 B2)
`CBM2014-00193 (Patent 8,061,598 B2)
`CBM2014-00194 (Patent 8,118,221 B2)
`CBM2014-00199 (Patent 8,118,221 B2)
`It is
`ORDERED that Smartflash shall file the transcript of the present
`teleconference in each of the cases identified above; and
`FURTHER ORDERED that Smartflash is not authorized to file a
`motion to compel routine discovery, a motion to stay these proceedings, or a
`motion to change or extend the due dates in the current Scheduling Orders.
`
`
`
`
`
`
`5
`
`
`
`CBM2014-00190 (Patent 7,334,720 B2)
`CBM2014-00192 (Patent 8,033,458 B2)
`CBM2014-00193 (Patent 8,061,598 B2)
`CBM2014-00194 (Patent 8,118,221 B2)
`CBM2014-00199 (Patent 8,118,221 B2)
`PETITIONER:
`
`Walter Renner
`Thomas Rozylowicz
`Fish & Richardson P.C.
`axf@fr.com
`CBM39843-0007CP2@fr.com
`
`
`PATENT OWNER:
`
`Michael R. Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`mcasey@dbjg.com
`jsd@dbjg.com
`
`6
`
`