CBM2015-00015
`U.S. Patent No. 8,118,221 B2
`
`
`
`
`
`Attorney Docket No.
`104677-5008-813
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2015-00015
`Patent 8,118,221 B2
`______________________
`
`
`
`
`
`
`
`
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 325(c) AND 27 C.F.R. § 42.222(b) OR, IN THE
`ALTERNATIVE, FOR COORDINATION OF SCHEDULE, AND
`REQUEST FOR SHORTENED RESPONSE TIME FOR
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`U.S. Patent No. 8,118,221 B2
`
`
`
`
`
`Attorney Docket No.
`104677-5008-813
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2015-00015
`Patent 8,118,221 B2
`______________________
`
`
`
`
`
`
`
`
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 325(c) AND 27 C.F.R. § 42.222(b) OR, IN THE
`ALTERNATIVE, FOR COORDINATION OF SCHEDULE, AND
`REQUEST FOR SHORTENED RESPONSE TIME FOR
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`CBM2015-00015
`U.S. Patent No. 8,118,221 B2
`
`I. RELIEF REQUESTED
`
`
`
`
`Attorney Docket No.
`104677-5008-813
`
`Pursuant to 35 U.S.C. § 325(c) and 37 C.F.R. § 42.222(b), and as discussed dur-
`
`ing the Initial Conference Call with the Board on October 29, 2014 in CBM2014-
`
`00102 (“October 29 Call”), Petitioner Apple Inc. (“Petitioner”) hereby moves for
`
`joinder of the limited grounds raised in its new Petition for Covered Business Method
`
`Patent Review (“CBM”) of United States Patent No. 8,118,221 (“the ’221 patent”)—
`
`filed concurrently with this Motion—with the already-instituted CBMs for the ’221
`
`patent, Apple Inc. v. Smartflash LLC, CBM2014-00102 and -00103, which involve the
`
`same parties and have been consolidated as CBM2014-00102. In the alternative, if the
`
`Board does not grant joinder, Petitioner requests that the Board coordinate the
`
`schedules of each proceeding such that, at minimum, the oral arguments (if requested)
`
`occur at the same time, facilitating entry of concurrent Final Written Decisions.
`
`In conjunction with this request for joinder or, alternatively, coordination, Peti-
`
`tioner respectfully requests that the Board specify a shortened response period of six
`
`(6) weeks (until December 11, 2014) in which Patent Owner Smartflash LLC (“Patent
`
`Owner”) may file a Preliminary Response to the Petition. As confirmed with the
`
`Board during the October 29 Call, Petitioner will shortly submit a proposed schedule
`
`for coordinating these proceedings after conferring with counsel for Patent Owner
`
`Smartflash LLC (“Patent Owner”) to determine whether agreement on a proposed
`
`schedule can be reached between the parties.
`
`
`
`2
`
`
`
`CBM2015-00015
`
`U.S. Patent No. 8,118,221 B2
`
`
`II. STATEMENT OF MATERIAL FACTS
`
`Attorney Docket No.
`104677-5008-813
`
`1.
`
`On March 28, 2014, Petitioner filed two petitions for CBM review of the
`
`’221 patent for claims 1, 2, 11-14, and 32. See CBM2014-00102 and -00103, Paper 2.
`
`2.
`
`On September 30, 2014 the Board instituted trial in both of those pro-
`
`ceedings on claims 1, 2, and 11-14 for grounds under 35 U.S.C. § 103, and consolidat-
`
`ed the CBMs. Id., Paper 8 at 24-25.
`
`3.
`
`The primary prior art relied on for the grounds instituted in CBM2014-
`
`00102 is Stefik, including in light of Poggio (Ex. 1016).1 Id. at 24. The primary prior
`
`art reference for the grounds instituted in CBM2014-00103 is Ginter (Ex. 1215). Id.
`
`4.
`
`The same patent, Petitioner, and Patent Owner are involved in the al-
`
`ready-instituted CBMs (now consolidated as CBM2014-00102) and the new Petition
`
`filed concurrently with this Motion, and it is Petitioner’s understanding that the same
`
`counsel for each party from the already-instituted CBMs will represent Petitioner and
`
`Patent Owner in the new Petition proceedings.
`
`5.
`
`The new Petition challenges on prior art grounds one claim—claim 32—
`
`that Petitioner had challenged in the earlier petitions, but that was not instituted for
`
`trial. See id. at 17-24.
`
`
`1 As discussed in the Petition, “Stefik” refers to two documents that Petitioner sub-
`
`mits should be considered a single reference—Stefik ’980 (Ex. 1214) and Stefik ‘235
`
`(Ex. 1213), which incorporates Stefik ’980 by reference.
`
`
`
`3
`
`
`
`CBM2015-00015
`U.S. Patent No. 8,118,221 B2
`
`
`
`
`
`Attorney Docket No.
`104677-5008-813
`
`6.
`
`In particular, the new Petition asserts grounds based on 35 U.S.C. § 103
`
`for claim 32 using a combination of Stefik and Poggio (which were cited in combina-
`
`tion by Petitioner and instituted for trial in CBM2014-00102) with the addition of two
`
`new references, Kopp (Ex. 1210) and Smith (Ex. 1219). (One prior art ground in the
`
`Petition is based on Stefik in view of Poggio and Kopp; the other ground simply adds
`
`Smith to this combination.)
`
`7.
`
`The new Petition also asserts one ground of invalidity based on 35
`
`U.S.C. § 101 for claim 32, as well as for claims 1, 2 and 11 that have been instituted
`
`for trial in CBM2014-00102.
`
`8.
`
`Petitioner relies in its new Petition on a supporting declaration from the
`
`same expert who submitted a declaration in the already-instituted CBMs.
`
`III. DISCUSSION
`
`The requested joinder will serve to secure the just, speedy, and inexpensive res-
`
`olution of these proceedings. Under 35 U.S.C. § 325(c):
`
`If more than 1 petition for a post-grant [or covered busi-
`ness method] review under this chapter is properly filed
`against the same patent and the Director determines that
`more than 1 of these petitions warrants the institution of a
`post-grant review under section 324, the Director may con-
`solidate such reviews into a single post-grant [or covered
`business method] review.
`
`In addition, 37 C.F.R. § 42.222(b) provides that “[j]oinder may be requested by a pa-
`
`
`
`4
`
`
`
`CBM2015-00015
`U.S. Patent No. 8,118,221 B2
`
`tent owner or petitioner. Any request for joinder must be filed, as a motion under
`
`Attorney Docket No.
`104677-5008-813
`
`
`
`
`§ 42.22, no later than one month after the institution date of any post-grant [or cov-
`
`ered business method] review for which joinder is requested.” This Motion is timely
`
`under § 42.222(b) because Petitioner is filing it within one month after the September
`
`30, 2014 institution date for the already-instituted CBMs.
`
`The Board has further provided that a motion for joinder should: (1) set forth
`
`the reasons why joinder is appropriate; (2) identify any new grounds of unpatentability
`
`asserted in the petition; (3) explain what impact (if any) joinder would have on the tri-
`
`al schedule of the existing proceeding; and (4) address specifically how briefing and
`
`discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC, IPR2013-00004,
`
`Paper 15 at 4 (Apr. 24, 2013). Analysis of these factors here warrants the Board’s use
`
`of its discretion to grant the requested joinder.
`
`The existence of several similarities between the already-instituted CBMs (con-
`
`solidated as CBM2014-00102) and the new Petition supports application of joinder.
`
`The same patent, parties, and counsel are involved in both proceedings. The same
`
`expert for Petitioner is involved in both proceedings—and, presumably, Patent Own-
`
`er may use a common expert in both proceedings. Overlapping claims are at issue in
`
`both proceedings—on grounds for § 103 in the already-instituted CBMs and for § 101
`
`in the new Petition. Patent Owner has already responded to, and the Board has al-
`
`ready analyzed for institution, two prior petitions challenging every claim now at issue
`
`
`
`5
`
`
`
`CBM2015-00015
`U.S. Patent No. 8,118,221 B2
`
`in the new Petition, which contain overlapping subject matter with claims already in-
`
`Attorney Docket No.
`104677-5008-813
`
`
`
`
`stituted for trial. And Petitioner asserts the same primary prior art references as in the
`
`original, already-instituted CBM trial. As noted, the new Petition also adds one
`
`ground of invalidity based on § 101 for both claim 32 and certain claims already insti-
`
`tuted for review under § 103 in CBM2014-00102, the unpatentability of which was
`
`confirmed by the Supreme Court’s recent decision in Alice Corp. Pty, Ltd. v. CLS Bank
`
`Int’l, 134 S. Ct. 2347 (2014), which was decided after Petitioner’s original petitions
`
`challenging the ’221 Patent were filed.
`
`Petitioner believed, in submitting its original petitions, that it had made the re-
`
`quired showing to invalidate claim 32. In its September 30 Institution Decision, how-
`
`ever, the Board construed the term “access rule” as “a rule specifying a condition un-
`
`der which access to content is permitted,” and determined Petitioner had not shown it
`
`was more likely than not that it would prevail in demonstrating that Stefik, in combi-
`
`nation with other cited references, rendered obvious claim 32’s code “responsive to
`
`payment validation data” to receive an “access rule” specifying at least one condition
`
`for accessing data, the condition being dependent upon the “amount of payment as-
`
`sociated with the payment data forwarded to the payment validation system” under
`
`the Board’s construction. In light of the Board’s Decision, Petitioner has now identi-
`
`fied in the Petition two additional prior art references—Kopp and Smith (Exs. 1210,
`
`1219)—that contain explicit disclosures of “access rules” as construed by the Board
`
`
`
`6
`
`
`
`CBM2015-00015
`U.S. Patent No. 8,118,221 B2
`
`and expressly disclose code to retrieve access rules responsive to payment validation
`
`Attorney Docket No.
`104677-5008-813
`
`
`
`
`data and access rules specifying access conditions that are dependent on amount of
`
`payment. (As detailed in the Petition, Kopp, for example, describes a vending system
`
`that allows a user to specify a desired extent of usage, pay for only that amount of us-
`
`age, and then receive data limited to the purchased usage amount (see, e.g., Ex. 1210
`
`2:50-65), while Smith provides express disclosure of a software vending system that
`
`allows a user to pay license fees proportional to the value received from using soft-
`
`ware, rather than paying all or nothing (see, e.g., Ex. 1219 6:1-5; 18:4-33).) Petitioner
`
`has also identified additional disclosure in the previously cited Stefik and Poggio ref-
`
`erences concerning these limitations of claim 32 as construed by the Board, further
`
`confirming that it would have been obvious and routine to employ the advantageous
`
`teachings of Kopp and Smith in implementing the system disclosed by Stefik and
`
`Poggio.
`
`Given the significant overlap in subject matter and prior art, the requested
`
`joinder offers the Board and the parties significant efficiencies by permitting the prior
`
`art arguments to be addressed together, and by facilitating resolution of § 101 patent
`
`eligibility of the same claims at the same time. Briefing, discovery and argument
`
`would be simplified, as would the Board’s resolution of the invalidity issues presented
`
`across these proceedings. With particular reference to discovery, Petitioner relies on
`
`the same expert in its new Petition as in its original petitions, thus making it possible
`
`
`
`7
`
`
`
`CBM2015-00015
`U.S. Patent No. 8,118,221 B2
`
`to hold a single deposition of this witness for all proceedings, or at minimum—
`
`Attorney Docket No.
`104677-5008-813
`
`
`
`
`depending on the final schedule—to enable an abbreviated follow-on deposition that
`
`could be presented for the Board’s common consideration of all invalidity issues in all
`
`proceedings. To the extent Patent Owner uses a common expert, the same will be
`
`true for that witness. Given the significant overlap in challenged subject matter (only
`
`one non-instituted claim, with elements common to the previously-instituted claims, is
`
`presented in the new Petition), prior art issues and subject matter eligibility issues,
`
`common discovery and briefing will enable both the parties and the Board to enjoy
`
`efficiencies in addressing these questions at once, rather than in unnecessary and du-
`
`plicative serial filings and arguments.
`
`Joinder here need not have any appreciable effect on the trial schedule of the
`
`already-instituted CBMs. Indeed, Petitioner will seek to merge the Due Dates for
`
`proceedings under the new Petition with the Due Dates for the already-instituted
`
`CBMs to the extent practicable (and, as discussed in the October 29 Call, Petitioner
`
`will confer with Patent Owner to determine whether agreement can be reached on a
`
`proposed schedule to provide the Board and the parties with the efficiencies that can
`
`be realized by addressing the invalidity questions concerning the ’221 on one time-
`
`line).
`
`To accommodate joinder (or, alternatively, coordination of schedules) with the
`
`pending CBM2014-00102 trial, some compression of the general default schedule for
`
`
`
`8
`
`
`
`CBM2015-00015
`U.S. Patent No. 8,118,221 B2
`
`this new Petition will be necessary. Subject to the parties’ negotiation of a possible
`
`Attorney Docket No.
`104677-5008-813
`
`
`
`
`joint proposal on schedule, Petitioner accordingly requests at the outset that the
`
`Board provide a shortened period of six (6) weeks (until December 11, 2014) for a Pa-
`
`tent Owner Preliminary Response to the new Petition. Petitioner contemplates that
`
`its own periods for response will also be compressed. Given the significant overlap of
`
`issues and evidence, however, Petitioner respectfully submits that neither party would
`
`need to be unfairly prejudiced by the shortening of these periods from the general
`
`timelines provided as a default for entirely new invalidity proceedings. In connection
`
`with the Preliminary Response, for example, Patent Owner and its counsel are already
`
`quite familiar with—and have already responded to two Petitions concerning—the
`
`patent and claims at issue, as well as the primary prior art references at issue here, and
`
`Patent Owner has already briefed the threshold question of whether the patent at is-
`
`sue qualifies for a CBM review.
`
`Finally, as stated above, should the Board deny joinder, Petitioner requests in
`
`the alternative that the Board coordinate the schedules of each proceeding such that,
`
`at minimum, the oral arguments (if requested) occur together. (Again, as discussed in
`
`the October 29 Call, Petitioner will confer with Patent Owner to explore whether a
`
`proposed schedule for such coordination can be agreed.) Good cause exists to grant
`
`this alternative relief for the reasons enumerated above. In particular, given the
`
`common issues already raised in each proceeding, a somewhat-accelerated schedule
`
`
`
`9
`
`
`
`CBM2015-00015
`U.S. Patent No. 8,118,221 B2
`
`will not cause undue prejudice, and holding a common argument on the same patent
`
`Attorney Docket No.
`104677-5008-813
`
`
`
`
`and claims will not only increase the efficiencies for the parties, but will also enable to
`
`Board to coordinate its determinations on these overlapping questions and its issu-
`
`ance of Final Written Decisions for each proceeding.
`
`IV. CONCLUSION
`
`For the foregoing reasons, Petitioner respectfully requests that the Board grant
`
`joinder of trial, if instituted, on the new Petition filed concurrently with this Motion,
`
`with the pending consolidated trial in CBM2014-00102, or, in the alternative, that the
`
`Board coordinate the schedules in these proceedings to allow a common oral argu-
`
`ment and Final Written Decisions. In addition, Petitioner respectfully requests a
`
`shortened period of six (6) weeks (until December 11, 2014) for a Patent Owner Pre-
`
`liminary Response.
`
`Respectfully submitted,
`
`
`
`
`
`By:/J. Steven Baughman/
`J. Steven Baughman (Lead Counsel)
`Megan Raymond
`ROPES & GRAY LLP
`
`
`
`
`
`
`October 30, 2014
`
`
`
`
`Ching-Lee Fukuda (Backup Counsel)
`ROPES & GRAY LLP
`
`
`Mailing address for all PTAB correspondence: ROPES & GRAY LLP,
`IPRM – Floor 43, Prudential Tower, 800 Boylston Street, Boston, MA 02199-3600
`Attorneys for Petitioner Apple Inc.
`
`
`
`10
`
`
`
`CBM2015-00015
`U.S. Patent No. 8,118,221 B2
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Attorney Docket No.
`104677-5008-813
`
`
`
`The undersigned hereby certifies that a copy of PETITIONER’S MO-
`
`TION FOR JOINDER UNDER 35 U.S.C. § 325(c) AND 27 C.F.R. § 42.222(b)
`
`AND REQUEST FOR SHORTENED RESPONSE TIME FOR PATENT OWN-
`
`ER’S PRELIMINARY RESPONSE was served on October 30, 2014, by causing the
`
`aforementioned document to be deposited in the United States Postal Service as Ex-
`
`press Mail postage pre-paid in an envelope addressed to:
`
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`4300 Wilson Blvd., 7th Floor
`Arlington, VA 22203
`
`(Label No. EF 070 057 713 US)
`
`Attorneys for Patent Owner Smartflash LLC
`
`
`
`
`
`
`
`
`
`
`
`
`
`s/Megan Raymond
`Megan Raymond
`
`ROPES & GRAY LLP
`
`
`
`
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
