Trials@uspto.gov
`571-272-7822
`
` Paper No. 12
` Entered: May 29, 2015
`
`
`
`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.
`____________
`
`Case CBM2014-00204
`Patent 8,336,772 B2
`____________
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, GREGG I. ANDERSON,
`MATTHEW R. CLEMENTS, and PETER P. CHEN,
`Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`571-272-7822
`
` Paper No. 12
` Entered: May 29, 2015
`
`
`
`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.
`____________
`
`Case CBM2014-00204
`Patent 8,336,772 B2
`____________
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, GREGG I. ANDERSON,
`MATTHEW R. CLEMENTS, and PETER P. CHEN,
`Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`CBM2014-00204
`Patent 8,336,772 B2
`
`
`I.
`
`INTRODUCTION
`
`Samsung Electronics America, Inc. and Samsung Electronics Co. Ltd.
`
`(“Petitioner”) request rehearing (Paper 10, “Req. Reh’g”) of the Board’s
`
`Decision (Paper 9, “Dec.”) denying covered business method patent review
`
`of claims 5, 10, 14, 26, and 32 (“challenged claims”) of U.S. Patent
`
`8,336,772 B2 (“the ’772 patent”).
`
`In its Corrected Petition (Paper 4, “Pet.”), Petitioner alleged the
`
`challenged claims were all either anticipated by Gruse (Ex. 1006) or would
`
`have been obvious over Gruse combined with other prior art. Pet. 3.
`
`Petitioner alleged Gruse was prior art under 35 U.S.C. § 102(a) because the
`
`date of its publication is before the earliest filing date to which the
`
`challenged claims are entitled. Pet. 17–21. Specifically, Petitioner alleged
`
`the ’772 patent was not entitled to the filing date of a prior-filed UK
`
`Application No. 9925227.2 (Ex. 1008, “the GB Application”). Id.
`
`In the Decision, the Board concluded Petitioner did not show
`
`sufficiently that claim 1 is not entitled to the benefit of the filing date of the
`
`GB Application. Dec. 17. The Board also concluded that the grounds
`
`asserted against all the challenged claims depended upon whether or not
`
`Gruse is prior art under 35 U.S.C. § 102(a). Id. at 17–18. Accordingly, the
`
`Petition was denied as to all challenged claims. Id.
`
`In the Request for Rehearing, Petitioner contends we
`
`“misapprehended the written description requirement and consequently
`
`overlooked the importance of gaps (identified in the Petition) between the
`
`GB Application and these claim elements.” Req. Reh’g 1.
`
`
`
`2
`
`
`
`CBM2014-00204
`Patent 8,336,772 B2
`
`
`II. ANALYSIS
`
`When rehearing a decision on institution, the Board reviews the
`
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). The request for
`
`rehearing must identify, specifically, all matters the party believes the Board
`
`misapprehended or overlooked. 37 C.F.R. § 42.71(d).
`
`In the Decision, we determined that the limitation “code responsive to
`
`said user selection of said at least one selected item of multimedia content to
`
`transmit payment data relating to payment for said at least one selected item
`
`of multimedia content via said wireless interface for validation by a payment
`
`validation system” (the “user selection limitation”) found written description
`
`support in the GB Application. Dec. 15–16. Petitioner contends our
`
`conclusion was wrong and that the “Petition demonstrates that the GB
`
`Application fails to provide written description support for this limitation.”
`
`Req. Reh’g 4–7.
`
`In support of its contention, Petitioner first cites to portions of the
`
`Petition that “demonstrate that the GB Application fails to provide written
`
`support” for the user selection limitation. Id. at 4 (citing Pet. 19–21), 5
`
`(citing Pet. 19–21), 5–6 n.1 (citing Pet. 20), 6 (citing Pet. 19–21). Petitioner
`
`also cites to portions of the Declaration of Dr. Jeffrey A. Bloom as
`
`supporting its argument. Id. at 6–7 (citing Ex. 1003 ¶¶ 116–119). Based on
`
`the preceding, Petitioner alleges the Petition demonstrated “gaps” between
`
`the claims and the GB Application, which have an importance that was
`
`overlooked “due to misapprehension of the written description requirement.”
`
`
`
`3
`
`
`
`CBM2014-00204
`Patent 8,336,772 B2
`
`Id. at 1, 4. Petitioner cites the Federal Circuit’s opinion in the Ariad1 case
`
`for the law regarding the written description requirement. Id. at 2, 6, 7, 8.
`
`Our Decision addressed all of the arguments Petitioner now cites as a
`
`basis for rehearing, including the alleged “gaps” between the GB
`
`Application and the argued limitations of claim 1 (Dec. 14–17 (citing
`
`Pet. 19–21)), and the Bloom Declaration paragraphs cited by Petitioner (id.
`
`at 17 n.11). The Decision applied the standard set forth in Ariad,
`
`determining that the GB Application “reasonably conveys to those skilled in
`
`the art that the inventor had possession” of the claimed subject matter, i.e.,
`
`claim 1’s user selection limitation. Id. at 15–16 (citing Ariad, 598 F.3d at
`
`1351). The Decision also applied Ariad to the other limitation of claim 12
`
`argued in the Petition, which is not raised specifically in the Request for
`
`Rehearing. Id. at 16–17.
`
`We are not persuaded that we overlooked the importance of any of the
`
`argued “gaps.” We compared the GB Application disclosure to each
`
`limitation of claim 1 identified by Petitioner in light of Ariad. Indeed,
`
`Petitioner does not argue that we omitted discussing any limitation it argued,
`
`rather that we should have determined that the “gaps” were of greater
`
`significance. The Request for Rehearing next restates an argument made in
`
`the Petition, that the GB Application addresses “access control responsive to
`
`validation, not to any code ‘responsive to said user selection of said at least
`
`
`1 Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en
`banc).
`2 The Petition also argued the claim 1 limitation “. . . responsive to said code
`to control access permitting access to said at least one selected item of
`multimedia content” lacked written description support in the GB
`Application. Pet. 21.
`
`
`
`4
`
`
`
`CBM2014-00204
`Patent 8,336,772 B2
`
`one selected item of multimedia content to transmit payment data relating to
`
`payment for said at least one selected item of multimedia content via said
`
`wireless interface for validation by a payment validation system.’” Req.
`
`Reh’g 5 (citing Pet. 21). We were not persuaded by this argument in the
`
`first instance. Dec. 15–16.3 Petitioner further argues that our reliance on
`
`Ariad’s “reasonably conveys” standard is an acknowledgement that passages
`
`of the GB Application cited in the Decision lack adequate written
`
`description support. Id. at 6. Petitioner also argues that we “appear” to have
`
`misapprehended Ariad by “injecting an inference into the disclosure
`
`proffered by the priority document in order to fill a gap between that
`
`disclosure and the Challenged Claims.” Req. Reh’g 8 (citing Ariad, 598
`
`F.3d at 1352). Petitioner suggests that we used an obviousness analysis,
`
`which Ariad states does not satisfy the written description requirement. Id.
`
`Lastly, Petitioner cites to other portions of Ariad for the proposition that
`
`written description must be shown in the disclosure and that the
`
`determination is an objective inquiry based on what is disclosed in the “four
`
`corners of the specification from the perspective of a person of ordinary skill
`
`in the art.” Req. Reh’g 7–8 (citing Ariad, 598 F.3d at 1351, 1353).
`
`Ariad clearly states that “reasonably conveys” is the written
`
`description standard, the standard we applied in determining whether the GB
`
`Application provides written description support for the challenged claims.
`
`
`3 We determined the GB Application’s disclosure of “restricting access to
`the downloaded data (i.e., user selected data) based upon checked and
`validated payment data” reasonably conveyed, under Ariad, “transmitting
`payment data to the payment validation system in response to the user
`selected data,” as recited in claim 1. Dec. 15–16 (citing Ariad, 598 F.3d at
`1351) (emphases added).
`
`
`
`5
`
`
`
`CBM2014-00204
`Patent 8,336,772 B2
`
`Ariad, 598 F.3d at 1351. In sum, Petitioner disagrees that the GB
`
`Application supports the claim limitations because Petitioner disagrees that
`
`our application of the correct law regarding the requirement for written
`
`description support reached the correct conclusion. Disagreements with the
`
`Board’s conclusions are not a basis for alleging that the Board
`
`misapprehended or overlooked the arguments and evidence presented.
`
`Accordingly, we remain unpersuaded by the Petitioner’s arguments.
`
`III. CONCLUSION
`
`For the foregoing reasons, the Board did not abuse its discretion when
`
`it determined that Petitioner did not show sufficiently that Gruse is prior art
`
`under 35 U.S.C. § 102(a). Accordingly, Petitioner’s request for rehearing is
`
`denied.
`
`IV. ORDER
`
`Petitioner’s Request for Rehearing is denied.
`
`
`
`6
`
`
`
`CBM2014-00204
`Patent 8,336,772 B2
`
`PETITIONER:
`
`W. Karl Renner
`Thomas Rozylowicz
`axf@fr.com
`CBM39843-0003CP1@fr.com
`
`
`
`PATENT OWNER:
`
`Michael Casey
`mcasey@dbjg.com
`
`J. Scott Davidson
`jsd@dbjg.com
`docket@dbjg.com
`Davidson Berquist Jackson & Gowdey, LLP
`
`7
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
