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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 59
`Entered: March 18, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,1
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-00015
`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.
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`
`DECISION
`Motion to Terminate
`37 C.F.R. § 42.72
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`1 Apple has been dismissed as a Petitioner. Paper 49, 8.
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`
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`Case CBM2015-00015
`Patent 8,118,221 B2
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`On April 10, 2015, we instituted a transitional covered business
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`method patent review (Paper 23, “Institution Decision” or “Inst. Dec.”)
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`based upon Apple’s assertion that claim 1 (“the challenged claim”) is
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`directed to patent ineligible subject matter under 35 U.S.C. § 101. Inst. Dec.
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`21. We subsequently dismissed Apple as a petitioner in this trial (Paper 49,
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`8) because Apple was the petitioner in CBM2014-00102 that resulted in a
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`final written decision with respect to claim 1, the same claim challenged in
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`this trial. Id. at 7; see 35 U.S.C. 325(e)(1) (“The petitioner in a post-grant
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`review of a claim in a patent under this chapter that results in a final written
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`decision under section 328(a), or the real party in interest or privy of the
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`petitioner, may not request or maintain a proceeding before the Office with
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`respect to that claim on any ground that the petitioner raised or reasonably
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`could have raised during that post-grant review.”). Thus, we determined that
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`under 35 U.S.C. § 325(e)(1), Apple is estopped from participating further in
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`this trial. Id. at 2–7.
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`Nonetheless, we decided to proceed to a Final Written Decision
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`because § 325(e)(1) speaks to actions that may not be undertaken by
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`Petitioner (or its real party in interest or privy). Paper 49, 5–6. On March
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`15, 2016, however, Patent Owner filed an authorized motion to terminate
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`this proceeding stating that “[o]n March 4, 2016, pursuant to Fed. R. App. P.
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`42(b), the United States Court of Appeals for the Federal Circuit dismissed
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`[Patent Owner’s] appeal of [the final written decision in CBM2014-00102
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`determining] that claim 1 of the ’221 Patent is unpatentable.” Paper 58, 3.
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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. Claim 1 of the ’221 patent has been
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`finally cancelled and any decision we might reach in this proceeding
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`2
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`
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`Case CBM2015-00015
`Patent 8,118,221 B2
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`regarding the patentability of this claim would be moot and purely advisory.
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`We do not see how the just, speedy, and inexpensive resolution of every
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`proceeding (37 C.F.R. § 42.1(b)) would be secured by rendering a final
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`written decision in this case.
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`
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`Accordingly it is
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`ORDER
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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 CBM2015-00015 is terminated.
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`3
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`4
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`Case CBM2015-00015
`Patent 8,118,221 B2
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`
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`PETITIONERS:
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`J. Steven Baughman
`steven.baughman@ropesgray.com
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`Ching-Lee Fukuda
`ching-lee.fukuda@ropesgray.com
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`Megan Raymond
`Megan.raymond@ropesgray.com
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`
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`PATENT OWNER:
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`Michael Casey
`smartflash-cbm@dbjg.com
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`J. Scott Davidson
`jsd@dbjg.com
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