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
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`PTAB Docket No. CBM2014-00204
`Patent 8,336,772 B2
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`Petitioner’s Request for Rehearing Under
`37 C.F.R. § 42.71(d)
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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
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`PTAB Docket No. CBM2014-00204
`Patent 8,336,772 B2
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`Petitioner’s Request for Rehearing Under
`37 C.F.R. § 42.71(d)
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`PTAB Docket No.: CBM2014-00204
`Attorney Docket No: 39843-0008CP1
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`TABLE OF CONTENTS
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`I.
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`II.
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`INTRODUCTION ........................................................................................... 1
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`PRECISE RELIEF REQUESTED .................................................................. 3
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`III. LEGAL STANDARDS ................................................................................... 3
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`IV. ARGUMENT ................................................................................................... 4
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`V.
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`CONCLUSION ................................................................................................ 9
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`i
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`TABLE OF AUTHORITIES
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`PTAB Docket No.: CBM2014-00204
`Attorney Docket No: 39843-0008CP1
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`Rules
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`35 U.S.C. § 112 ..................................................................................... 2
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`37 C.F.R. § 42.71(d) .............................................................................. 3
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`Cases
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`Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336 (Fed.
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`Cir. 2010) (en banc) ................................................................ passim
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`In re Lukach, 442 F.2d 967 ................................................................... 8
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`Tronzo v. Biomet, Inc., 156 F. 3d 1154 (Fed. Cir. 1998) ...................... 2
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`Vas-Cath Inc. v. Mahurkar 935 F.2d 1555 (Fed. Cir. 1991) ................ 8
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`
`
`ii
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`I.
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`INTRODUCTION
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`PTAB Docket No.: CBM2014-00204
`Attorney Docket No: 39843-0008CP1
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`In declining to institute this Petition’s grounds, the Board found the primary
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`prior art reference (Gruse) unqualified as prior art against the ‘772 Patent. That is,
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`contrary to arguments that were presented in the Petition, the Board awarded the
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`‘772 Patent with priority that was proclaimed on its face, and thereby disqualified
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`Gruse as prior art. Petitioner respectfully submits that this determination was the
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`product of misapprehension or oversight.
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`In more detail, the Institution Decision states that “Petitioner has [not]
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`shown sufficiently that claim 1 is not entitled to the benefit of the GB application’s
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`filing date,” due specifically to lack of showing of insufficient support for “code
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`responsive to said user selection of said at least one selected item of multimedia
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`content to transmit payment data relating to payment for said at least one selected
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`item of multimedia content via said wireless interface for validation by a payment
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`validation system,” as incorporated into claims 5, 10, 14, 26, and 32 (“Challenged
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`Claims”). See Institution Decision at 14-17.
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`Petitioner respectfully submits that, in reaching these conclusions, the
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`Institution Decision misapprehended the written description requirement and
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`consequently overlooked the importance of gaps (identified in the Petition)
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`between the GB Application and these claim elements. Indeed, the Institution
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`1
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`Decision appears to have improperly injected an inference into the disclosure
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`PTAB Docket No.: CBM2014-00204
`Attorney Docket No: 39843-0008CP1
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`proffered by the priority document in order to fill gaps between that disclosure and
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`the Challenged Claims. See, e.g., Institution Decision at 15-16 (“The GB
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`application further describes restricting access to the downloaded data (i.e. user
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`selected data) based upon checked and validated payment data, which reasonably
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`conveys . . . transmitting payment data to the payment validation system in
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`response to the user selected data”) (emphasis added).
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`For a claim in a later-filed application to be entitled to the filing date of an
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`earlier application, the earlier application must comply with the written description
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`requirement of 35 U.S.C. § 112 ¶ 1. See, e.g., Tronzo v. Biomet, Inc., 156 F. 3d
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`1154 (Fed. Cir. 1998). As the Federal Circuit has explained “a description that
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`merely renders the invention obvious does not satisfy the requirement.” Ariad
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`Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1352 (Fed. Cir. 2010)
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`(en banc). Rather, “the hallmark of written description is disclosure . . . the test
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`requires an objective inquiry into the four corners of the specification . . . the
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`specification must describe an invention understandable to [the] skilled artisan and
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`show that the inventor actually invented the invention claimed.” Id. at 1351
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`(emphases added).
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`2
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`PTAB Docket No.: CBM2014-00204
`Attorney Docket No: 39843-0008CP1
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`With this in mind, Petitioner respectfully requests reconsideration of the
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`priority date determination in a manner consistent with the written description
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`requirement, and further solicits review of the remaining portions of the Petition
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`that demonstrate obviousness of the Challenged Claims in view of Gruse and other
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`prior art references.
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`II.
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`PRECISE RELIEF REQUESTED
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`Petitioner requests rehearing of the decision against institution in the
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`CBM2014-00204 proceeding with regard to the obviousness of the Challenged
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`Claims in view of Gruse and other prior art references, because the Institution
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`Decision misapprehended the applicable legal standard for assessing the ‘772
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`Patent’s priority claim and consequently found the primary prior art reference
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`(Gruse) unqualified as prior art, despite that reference predating the priority date to
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`which the Challenged Claims are entitled.
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`III. LEGAL STANDARDS
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`“A party dissatisfied with a decision may file a request for rehearing,
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`without prior authorization from the Board.” 37 C.F.R. § 42.71(d). Such a
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`“request must specifically identify all matters the party believes the Board
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`misapprehended or overlooked, and the place where each matter was previously
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`addressed in a motion, an opposition, or a reply.” Id.
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`3
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`IV. ARGUMENT
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`PTAB Docket No.: CBM2014-00204
`Attorney Docket No: 39843-0008CP1
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`The Institution Decision indicates the Board’s belief that Petitioner has not
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`made an adequate showing of insufficient support for “code responsive to said user
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`selection of said at least one selected item of multimedia content to transmit
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`payment data relating to payment for said at least one selected item of multimedia
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`content via said wireless interface for validation by a payment validation system.”
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`See Institution Decision at 14-17. As explained below, the Petition demonstrates
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`that the GB Application fails to provide written description support for this
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`limitation, and, due to misapprehension of the written description requirement, the
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`Institution Decision overlooked the importance of demonstrated gaps between the
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`disclosure of the GB Application and the Challenged Claims.
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`The Petition expressly and specifically stated that the GB application “fails
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`to support many limitations recited in the challenged claims,” including, for
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`example, the limitation of “‘code responsive to said user selection of said at least
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`one selected item of multimedia content to transmit payment data relating to
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`payment for said at least one selected item of multimedia content via said wireless
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`interface for validation by a payment validation system’” (emphasis in original).
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`Petition at 19-21 (describing the extensive recitation in the claims of the ‘772
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`Patent of limitations requiring code responsive to user selections).
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`4
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`PTAB Docket No.: CBM2014-00204
`Attorney Docket No: 39843-0008CP1
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`In support of its determination that the Challenged Claims are entitled to the
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`priority date of the GB Application, the Institution Decision specifically referred to
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`the following passages of that document: “To download data onto the data storage
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`means the user can employ a data access terminal coupled to the internet” and “a
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`user could pay to enable an extra level on a game or to enable further tracks of an
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`album.” Institution Decision at 15.
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`Indisputably, these passages fail to describe transmitting payment data
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`relating to payment for a selected item of multimedia content via a wireless
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`interface for validation by a payment validation system in response to a user
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`having selected the multimedia content on his/her terminal. See Petition at 19-21.
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`Indeed, as the Petition points out, “[s]uch discussions only speak to access control
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`responsive to validation, not to any code ‘responsive to said user selection of said
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`at least one selected item of multimedia content to transmit payment data relating
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`to payment for said at least one selected item of multimedia content via said
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`wireless interface for validation by a payment validation system.’” Petition at 21.1
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`1 The Petition further noted that Patent Owner relied on the “responsive to”
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`limitation to overcome prior art during prosecution. See Petition at 20 (Noting that
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`5
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`PTAB Docket No.: CBM2014-00204
`Attorney Docket No: 39843-0008CP1
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`In apparent acknowledgment of the deficiencies in these cited passages, the
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`Institution Decision next asserts that “[t]he GB Application further describes
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`restricting access to the downloaded data (i.e., user selected data) based on checked
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`and validated payment data, which reasonably conveys, under Ariad, transmitting
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`payment data to the payment validation system in response to the user selected
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`data.” Institution Decision at 15-16 (emphasis added). As further support for the
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`proposition that the GB Application “reasonably conveys to those skilled in the art
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`that the inventor had possession” of the Challenged Claims, the Institution
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`Decision additionally cited passages of that document stating that “[t]he data
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`storage means and/or retrieval device can be provided with access control means to
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`prevent unauthorized access to the downloaded data” and “to stop or provide only
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`limited access of the user to the downloaded data in accordance with the amount
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`paid.” Id.
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`None of these additional passages, however, disclose the transmission of
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`payment data via a wireless interface in response to user selection of content. See
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`Petition at 19-21; Bloom at, e.g., ¶¶ 116-119 (observing that “I cannot find support
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`the entire “responsive to” limitation was added by Applicant in an amendment
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`filed in the Response of Feb. 6, 2007).
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`6
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`for the claims of the ‘772 Patent in the [GB Application]” and that the “[GB
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`PTAB Docket No.: CBM2014-00204
`Attorney Docket No: 39843-0008CP1
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`Application] does not discuss any code ‘responsive to said user selection of said at
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`least one selected item of multimedia content to transmit payment data relating to
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`payment for said at least one selected item of multimedia content via said wireless
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`interface for validation by a payment validation system’”).
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`Petitioner respectfully submits, moreover, that the Institution Decision’s
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`apparent reliance on Ariad for the proposition that the test of the written
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`description requirement is whether the disclosure in an earlier application
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`“reasonably conveys to those skilled in the art that the inventor had possession”
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`(emphasis added) is misplaced. See Institution Decision at 16. Indeed, in Ariad,
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`the Federal Circuit explained that the test of written description instead hinges on
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`“possession as shown in the disclosure”:
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`
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`the hallmark of written description is disclosure. . . . the test requires
`an objective inquiry into the four corners of the specification from the
`perspective of a person of ordinary skill in the art. Based on that
`inquiry, the specification must describe an invention understandable
`to that skilled artisan and show that the inventor actually invented the
`invention claimed.
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`7
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`Ariad at 1351, 1353 (emphases added). Here, the Institution Decision appears to
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`PTAB Docket No.: CBM2014-00204
`Attorney Docket No: 39843-0008CP1
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`be misapprehending this test by injecting an inference into the disclosure proffered
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`by the priority document in order to fill a gap between that disclosure and the
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`Challenged Claims. See id.at 1352 (“a description that merely renders the
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`invention obvious does not satisfy the requirement”); see also Vas-Cath Inc. v.
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`Mahurkar 935 F.2d 1555, 1562 (Fed. Cir. 1991) (“the description of a single
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`embodiment of a broadly claimed subject matter constitutes a description of the
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`invention for anticipation purposes . . ., whereas the same information in a
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`specification might not alone be enough to provide a description of that invention
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`for the purposes of adequate disclosure”) (quoting In re Lukach, 442 F.2d 967, at
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`970, 169 USPQ 795, at 797).
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`8
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`V. CONCLUSION
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`PTAB Docket No.: CBM2014-00204
`Attorney Docket No: 39843-0008CP1
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`For at least the foregoing reasons, Petitioner respectfully requests that the
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`Board amend the Institution Decision to include review of claims 5, 10, 14, 26, and
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`32 based on obviousness by Gruse and other references.
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`The Commissioner is hereby authorized to charge any fees due in connection
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`with this filing, or credit any overpayment, to Deposit Account No. 06-1050.
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`Respectfully submitted,
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`/Thomas Rozylowicz/
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`W. Karl Renner, Reg. No. 41,265
`Thomas Rozylowicz, Reg. No. 50,620
`Attorneys for Petitioner
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`4/29/2015
`Date:
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`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (202) 783-5070
`Facsimile: (202) 783-2331
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`9
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`PTAB Docket No.: CBM2014-00204
`Attorney Docket No: 39843-0008CP1
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`CERTIFICATE OF SERVICE
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`Patent No. 8,336,772
`Petitioner Request for Rehearing
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on April 29, 2015, a complete and entire copy of this Petitioner’s Request for
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`Rehearing was provided via email to the Patent Owner by serving the
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`correspondence email addresses of record as follows:
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`Michael R. Casey
`Davidson Berquist Jackson & Gowdey, LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
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`Email:
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`mcasey@dbjg.com
`docket@dbjg.com
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`
` /Diana Bradley/
`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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