`Tel: 571-272-7822
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`Paper 51, CBM2015-00015
`Paper 39, CBM2015-00018
`Entered: December 8, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`CBM2015-00015 (Patent 8,118,221 B2)
` CBM2015-00018 (Patent 7,942,317 B2) 1
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`
`
`ORDER
`Denying Rehearing Request
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`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.
`
`
`
`CBM2015-00015 (Patent 8,118,221 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
`
`
`I. INTRODUCTION
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`Patent Owner, Smartflash LLC (“Smartflash”), requests rehearing
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`under 37 C.F.R. § 42.71(d) of the Board’s November 5, 2015 Order (“Dec.,”
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`Paper 372). Paper 38 (“Mot.”). Smartflash also requests authorization to file
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`a motion to terminate CBM2015-00015 and CBM2015-00018. Id. at 1. In
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`the alternative, Smartflash requests that it be granted an oral hearing in
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`CBM2015-00015 and CBM2015-00018. Id.
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`In our Order, we determined that 35 U.S.C. § 325(e)(1) is applicable
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`to Apple with respect to claim 1 of U.S. Patent No. 8,118,221 (“the ’221
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`patent”) in CBM2015-00015 because Apple was the Petitioner in
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`CBM2014-00102, which resulted in a final written decision with respect to
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`claim 1 of the ’221 patent. Dec. 3. We likewise determined that § 325(e)(1)
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`is applicable to Apple with respect to claim 18 of U.S. Patent No. 7,942,317
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`(“the ’317 patent”) in CBM2015-00018 because Apple was the Petitioner in
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`CBM2014-00112, which resulted in a final written decision with respect to
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`claim 18 of the ’317 patent. Id. at 7. Because we determined that Apple
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`“reasonably could have raised” a 35 U.S.C. § 101 challenge to these claims
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`in its CBM2014-00102 and CBM2014-00112 petitions and because claims 1
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`and 18 were the only claims challenged in CBM2015-00015 and CBM2015-
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`00018, respectively, we dismissed Apple as a Petitioner from CBM2015-
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`00015 and CBM2015-00018. Id. at 4–5, 7. We further stated that because
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`Apple is the only Petitioner in these cases, we would not hear any argument
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`
`2 References are to paper numbers in CBM2015-00018, unless otherwise
`specified.
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`2
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`
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`CBM2015-00015 (Patent 8,118,221 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
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`with respect to these cases at the November 9, 2015, hearing.3 Id. at 5 n.3,
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`7–8 n.6. Lastly, we denied Smartflash authorization to file a motion to
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`terminate CBM2015-00015, noting that § 325(e)(1) does not proscribe
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`actions that we may take. Id. at 5–64 (citing Progressive Cas. Ins. Co. v.
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`Liberty Mut. Ins. Co., No. 2014-1466, 2015 WL 5004949, at *2 (Fed. Cir.
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`Aug. 24, 2015) (nonprecedential).
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`
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`II. ANAYLSIS
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`The applicable standard for a request for rehearing is set forth in
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`37 C.F.R. § 42.71(d), which provides in relevant part:
`
`A party dissatisfied with a decision may file a request for
`rehearing without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. The request must specifically
`identify
`all matters
`the party believes
`the Board
`misapprehended or overlooked, and the place where each
`matter was previously addressed in a motion, opposition, or a
`reply.
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`We deny Smartflash’s request for rehearing of our Order and its
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`request for authorization to file a motion to terminate these cases.
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`However, we grant Smartflash’s request for a hearing in CBM2015-
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`00015 and CBM2015-00018, as discussed below.
`
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`3 Notwithstanding our Order, we gave Smartflash the opportunity to provide
`argument in CBM2015-00015 and CBM2015-00018 at the November 9,
`2015 hearing. Smartflash, however, declined to make argument with respect
`to the two claims in these two cases. Mot. 13.
`4 As Smartflash notes, we requested briefing in CBM2015-00015 on whether
`Apple was estopped, but did not request such briefing in CBM2015-00018.
`Mot. 2.
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`3
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`
`
`CBM2015-00015 (Patent 8,118,221 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
`
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`Smartflash first argues that we misapprehend the decision in
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`Progressive because that case was limited to the facts presented in
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`that case. According to Smartflash, the Federal Circuit’s holding that
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`Ҥ 325(e)(1) by its terms does not prohibit the Board from reaching
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`decisions” is limited to Progressive’s argument in that case for the
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`“instantaneous application” of § 325(e)(1) to bar the Board from
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`entering a second decision posted to its electronic docketing system
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`just an hour after, but the same day as, it posted a first decision on the
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`same patent involving overlapping claims. Mot. 7; see Progressive,
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`2015 WL 5004949, at *1–2. We disagree. The Federal Circuit
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`expressly stated that “[t]here are two problems with Progressive’s
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`contention.” 2015 WL 5004949, at *2. With respect to the first
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`“problem” the Federal Circuit stated:
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`First: § 325(e)(1) by its terms does not prohibit the Board from
`reaching decisions. It limits only certain (requesting or
`maintaining) actions by a petitioner. Nothing in the provision,
`or chapter 32 more generally, equates that limitation on a
`petitioner with Board authority to enter a decision. Cf. § 327(a)
`(Board may enter decision even after petitioner settles and
`drops out of the proceeding).
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`Id. (emphasis added). We determine that this reasoning is persuasive
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`to guide our analysis of the facts presented here.
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`Smartflash next argues that our Order is inconsistent with the
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`Board’s decision in International Business Machines Corp. v.
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`Intellectual Ventures II, LLC, Case IPR2014-01465 (PTAB Nov. 6,
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`2015) (Paper 32) (“IBM case”). Again, we disagree. The decision in
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`the IBM case, after determining that the Petitioner was estopped,
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`acknowledged that Ҥ 315(e)(1) does not mandate that the Board
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`4
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`
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`CBM2015-00015 (Patent 8,118,221 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
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`reach a final written decision.” Id. at 9 (emphasis added). After
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`consideration of the “totality of the circumstances,” the decision stated
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`that it was appropriate to terminate the proceeding at issue. Id.
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`Smartflash’s request for leave to file a Motion to Terminate is denied
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`for the reasons previously set forth in our Estoppel Order. See Paper 37, 5–
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`6.
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`Lastly, Smartflash requests oral hearing in CBM2015-00015
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`and CBM2015-00018 should we deny its requests for authorization to
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`file motions to terminate. Mot. 13–14. We grant Smartflash’s
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`requests for oral hearing in these two cases. The oral hearing will be
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`conducted via teleconference. The Board will provide a court reporter
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`on the call. The oral hearing will be limited to fifteen minutes total
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`for both cases given that only one claim is at issue in each case.
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`Because Apple Inc. was dismissed from these cases as Petitioner,
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`Apple will not be permitted to participate in the hearing. By
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`December 11, 2015, Smartflash shall provide at least three different
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`dates and times between December 14–16 when it is available for the
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`hearing.
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`
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`It is:
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`ORDERED that Smartflash’s request for rehearing of our Order is
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`denied;
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`FURTHER ORDERED that Smartflash’s request for authorization to
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`file motions to terminate in CBM2015-00015 and CBM2015-00018 is
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`denied;
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`5
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`
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`CBM2015-00015 (Patent 8,118,221 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
`
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`FURTHER ORDERED that Smartflash’s request for an oral hearing
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`in CBM2015-00015 and CBM2015-00018 is granted, as provided above;
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`and
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`FURTHER ORDERED that by December 11, 2015, Smartflash shall
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`provide dates and times between December 14–16 when it is available for an
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`oral hearing.
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`
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`6
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`
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`CBM2015-00015 (Patent 8,118,221 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
`
`PETIONER (Dismissed):
`
`J. Steven Baughman
`Ching-Lee Fukuda
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`ching-lee.fukuda@ropesgray.com
`
`
`
`PATENT OWNER:
`Michael R. Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`mcasey@dbjg.com
`jsd@dbjg.com
`
`7