CBM2015-00016
`U.S. Patent No. 8,033,458
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`Attorney Docket No.
`104677-5008-814
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2015-00016
`Patent 8,033,458
`______________________
`
`PETITIONER’S REPLY IN SUPPORT OF ITS 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. 8,033,458
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`
`
`
`
`Attorney Docket No.
`104677-5008-814
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`APPLE INC.,
`Petitioner
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner
`______________________
`
`Case CBM2015-00016
`Patent 8,033,458
`______________________
`
`PETITIONER’S REPLY IN SUPPORT OF ITS 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
`
`
`
`
`
`
`
`CBM2015-00016
`U.S. Patent No. 8,033,458
`
`
`
`
`
`Attorney Docket No.
`104677-5008-814
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`Patent Owner’s Opposition (Paper 10, “Opp.”) simply fails to address the clear
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`reasons for joinder here. Rather than the two particular proceedings concerning the ’458 pa-
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`tent actually at issue in this Motion—proceedings whose joinder Patent Owner does
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`not and cannot suggest would yield anything other than a more just, speedy, and inex-
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`pensive result than two separate proceedings—the Opposition points instead to Peti-
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`tioner’s filings challenging two other patents that have not yet been instituted for trial—
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`proceedings Petitioner has not asked to join with the instituted trial on the ’458 pa-
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`tent1 (or to coordinate with the three other instituted trials the Board has already de-
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`termined to coordinate). This is mere misdirection, as is Patent Owner’s extended
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`unauthorized briefing (e.g., Opp. 3, 5-7) on its own separate argument—since disposed
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`of by the Board (see, e.g., Papers 14, 17)—that Petitioner was not permitted to make
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`any changes outside the claim charts when submitting its corrected petition. The Op-
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`position offers no substantive objection to joinder, which should be granted.
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`I.
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`DISCUSSION
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`In its Opposition, Patent Owner does not actually dispute Petitioner’s support
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`for joinder, including that joinder of the two proceedings involving the ’458 patent
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`will serve to secure the just, speedy, and inexpensive resolution of those trials, see 37
`
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`1 The unsupported suggestion that this proceeding should actually be delayed to coor-
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`dinate with these later petitions on different patents (Opp. at 8-9) is but one more at-
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`tempt at diversion from the instant Motion, aimed solely at prejudicing Petitioner.
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`
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`1
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`
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`CBM2015-00016
`U.S. Patent No. 8,033,458
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`C.F.R. § 42.1(b), and Petitioner’s detailed explanation of (1) why joinder is appropri-
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`Attorney Docket No.
`104677-5008-814
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`
`
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`ate, including this petition’s presentation of new § 101 arguments relying on Supreme
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`Court authority (Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)) issued
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`after the original petitions but addressing overlapping claims and subject matter, a
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`new § 112 argument for claim 11, and new § 103 arguments with art (including art
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`discovered after the original petition was filed) providing explicit disclosures the
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`Board found lacking from the art previously presented (e.g., CBM2014-00106, Paper 8,
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`14-15, 17-18) in combination with art overlapping with that in the instituted proceed-
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`ing; (2) the new grounds of unpatentability asserted; (3) the minimal impact on the ex-
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`isting trial schedule;2 and (4) the potential simplification of briefing and discovery for
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`the two ’458 proceedings.3 See Mot. (Paper 3) 4-8. Patent Owner neither contradicts
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`any of these reasons nor explains how joinder of the proceedings at issue could be inap-
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`2 Patent Owner has made no complaint about the specific proposed schedule, which
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`will enable efficient joinder even if it is further adjusted.
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`3 The Board determined to coordinate the schedules of the instituted trials on the
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`’221, ’458, ’598, and ’317 patents, and Petitioner asks to continue that coordination, as
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`the efficiencies it provides will be preserved and amplified by joinder. There is not,
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`however, an instituted proceeding on the ’720 and ’772 patents, and Patent Owner’s
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`attempt to invoke those separate petitions to delay this trial is unsupported; it also
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`cannot negate the efficiencies of resolving the two ’458 proceedings together.
`
`
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`2
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`
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`CBM2015-00016
`U.S. Patent No. 8,033,458
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`propriate—instead, making arguments extraneous to the actual issues at hand.
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`Attorney Docket No.
`104677-5008-814
`
`
`
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`First, though joinder of these two particular proceedings would certainly be less
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`expensive and more efficient than non-joinder for both the parties and the Board, Pa-
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`tent Owner inexplicably complains, instead, about the PTO fees incurred by Petitioner
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`in filing petitions on six separate patents (Opp. 4)—fees that, of course, have nothing
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`to do with whether joinder here is appropriate. Patent Owner’s supposed concerns
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`about costs borne and paid by Petitioner in accordance with the Board’s rules (or the
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`supposed “economic power” a party displays simply by following those rules) are
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`nothing but crocodile tears—and these PTO-established fees pale in comparison to
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`Patent Owner’s demand for almost $1 billion dollars of damages in parallel district
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`court litigation on these patents.4
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`Second, while joinder will most efficiently resolve the distinct but overlapping
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`issues of these two particular ’458 patent proceedings in a single case rather than in two
`
`separate challenges (and while continuation of the Board’s coordination with the oth-
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`er instituted proceedings on the ’221, ’598 and ’317 patents offers additional efficien-
`
`cies), Patent Owner argues joinder of the ’458 matters should be denied because, it
`
`suggests, Petitioner “stretched out” various filings. Opp. 4. This is both false and ir-
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`relevant: far from dragging its feet, Petitioner, after advising Patent Owner well in ad-
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`4 Equally specious are Patent Owner’s complaints about CBM proceedings by other
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`parties (e.g., Opp. 4)—made possible only by Patent Owner’s choice to sue them.
`
`
`
`3
`
`
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`CBM2015-00016
`U.S. Patent No. 8,033,458
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`vance,5 timely filed the instant petition and Motion for Joinder within 30 days of the
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`Attorney Docket No.
`104677-5008-814
`
`
`
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`initial ’458 institution decision, and similarly moved rapidly on the patents involved in
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`other instituted trials for which coordination is sought. The Board has the opportuni-
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`ty here, through joinder, to address in one proceeding new arguments not presented
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`in the already-instituted ’458 proceeding but involving significant overlap in subject
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`matter. Contrary to Patent Owner’s suggestion that Petitioner’s filing of multiple peti-
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`tions is somehow improper (e.g., Opp. 3), Petitioner quite properly presented new ar-
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`guments in the new petition that the Board has not previously considered, but that
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`now can most efficiently and appropriately be addressed together with the original peti-
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`tion.
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`Finally, though Patent Owner never disputes the efficiencies that would result
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`in joining the two proceedings involving the ’458 patent, especially with respect to
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`discovery (or from coordinating with the instituted proceedings involving the ’221,
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`’598 and ’317 patents), Patent Owner suggests that, because Petitioner also filed slight-
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`ly later petitions on two different patents for which no trial has yet been instituted, the
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`present ’458 schedule must somehow be delayed to the default schedule for those lat-
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`er petitions before any efficiencies would be achieved. See Opp. 8-9. This unsupport-
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`5 Notwithstanding Patent Owner’s baseless speculation (Opp. 4), Petitioner has made
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`clear from the outset, to Patent Owner and the Board, that Petitioner intended to pur-
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`sue Patent Owner’s actively litigated claims not instituted for trial, and it has done so.
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`
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`4
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`
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`CBM2015-00016
`U.S. Patent No. 8,033,458
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`ed request nonsensically ignores the benefits of the requested joinder, and would also
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`Attorney Docket No.
`104677-5008-814
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`
`
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`unfairly prejudice Petitioner in light of the parallel district court litigation that is rapid-
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`ly approaching trial—indeed, the parties have a pre-trial conference scheduled for
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`January 6. Petitioner filed the originally-instituted petitions to challenge the ’458 pa-
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`tent on March 31, 2014 and this new ’458 petition within 30 days of their institution,
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`on October 30 (see Paper 7; CBM2014-00106, Papers 3, 8). There is no basis for de-
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`laying these ’458 proceedings (or, for that matter, the proceedings on the other pa-
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`tents for which trial has been instituted—the ’221, ’598 and ’317 patents) to a later
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`date when Petitioner sought to challenge other patents not yet subject to trial before
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`the Board. Patent Owner has offered none, other than its desire for delay, and the
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`Board should reject this unjustified attempt to prejudice Petitioner.
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`II. CONCLUSION
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`For the foregoing reasons and those in Petitioner’s Motion, the Board should
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`grant the requested joinder, or, at minimum, the requested coordination of schedules.
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`Respectfully submitted,
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`
`
`
`
`By:/J. Steven Baughman/
`J. Steven Baughman (Lead Counsel)
`Megan Raymond
`ROPES & GRAY LLP
`
`
`
`
`
`
`January 2, 2015
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`
`
`
`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.
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`
`
`5
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`CBM2015-00016
`U.S. Patent No. 8,033,458
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`
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`
`
`Attorney Docket No.
`104677-5008-814
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`CERTIFICATE OF SERVICE
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`
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`The undersigned hereby certifies that a copy of PETITIONER’S RE-
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`PLY IN SUPPORT OF ITS MOTION FOR JOINDER UNDER 35 U.S.C. § 325(c)
`
`AND 27 C.F.R. § 42.222(b) OR, IN THE ALTERNATIVE, FOR COORDINA-
`
`TION OF SCHEDULE, AND REQUEST FOR SHORTENED RESPONSE
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`TIME FOR PATENT OWNER’S PRELIMINARY RESPONSE was served on Jan-
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`uary 2, 2015, to the following Counsel for Patent Owner via e-mail, pursuant to the
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`parties’ agreement concerning service:
`
`Michael R. Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
`Telephone: (703) 894-6406
`Facsimile: (703) 894-6430
`mcasey@dbjg.com
`jsd@dbjg.com
`docket@dbjg.com
`
`Attorneys for Patent Owner Smartflash LLC
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`
`
`
`
`
`s/ Darrell W. Stark
`Darrell W. Stark
`
`
`
`ROPES & GRAY LLP
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