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 B2
`
`
`
`PATENT OWNER’S LIST OF PROPOSED MOTIONS
`
`
`
`
`
`
`________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`APPLE INC.,
`Petitioner,
`v.
`SMARTFLASH LLC,
`Patent Owner.
`________________________
`Case CBM2015-00016
`Patent 8,033,458 B2
`
`
`
`PATENT OWNER’S LIST OF PROPOSED MOTIONS
`
`
`
`
`
`
`
`Case CBM2015-00016
`Patent 8,033,458 B2
`
`
`
`The Patent Trial and Appeal Board ("Board") has scheduled an initial
`
`conference call for Tuesday, May 11, 2015 at 2 PM. Pursuant to the Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. 48756, 48765-66 (Aug. 14, 2012), Patent Owner
`
`submits the following list of proposed motions it is currently considering filing.
`
`This list is provided without prejudice to Patent Owner’s right to seek
`
`authorization to file additional motions or to decide not to file the motions listed.
`
`I. Motion for Routine Discovery
`
`
`
`Patent Owner proposes to file a motion for routine discovery under 37 CFR
`
`42.51(b)(1)(iii) to obtain at least one document from Petitioner related to any
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`allegations by Petitioner (1) that any of Petitioner’s products do not infringe any of
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`the challenged claims and (2) that acceptable non-infringing alternatives exist to
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`the challenged claims, including at least Mr. Wechselberger’s report on non-
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`infringement and non-infringing alternatives from the litigation with Patent Owner
`
`in Case No. 6:13-cv-447, Smartflash LLC and SmartFlash Technologies Limited v.
`
`Apple Inc., Robot Entertainment, Inc., Kingsisle Entertainment, Inc., and Game
`
`Circus LLC (“the Apple litigation). Any such document would be inconsistent with
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`Petitioner’s arguments that the claims provide relative preemption sufficient to
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`invoke a finding of non-statutory subject matter under 35 USC 101.
`
`
`
`2
`
`
`
`Case CBM2015-00016
`Patent 8,033,458 B2
`
`
`
`By way of background, in the Apple litigation, the District Court held a
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`Dispositive Motions Hearing on December 2, 2014 for which there is an unsealed
`
`transcript of a portion of the hearing. A portion of the hearing related to a report
`
`by Mr. Wechselberger, Petitioner’s expert in both the litigation and this
`
`proceeding, on non-infringing alternatives to the claims, but the report itself is
`
`sealed such that Patent Owner’s counsel in this proceeding do not have access to it.
`
`As established in the unsealed transcript, during the hearing, Patent Owner’s
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`counsel discussed the general nature of at least four alternatives proposed in Mr.
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`Wechselberger’s report, but the specific details of the report were not provided.
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`The proposed alternatives discussed in the transcript include (1) providing content
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`to a user on credit and performing payment validation at a later time, (2) manually
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`inputting payment distribution information rather than reading it from a data store,
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`(3) preloading a number of popular apps instead of downloading them from an
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`application store, and (4) playing previously downloaded content on only when
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`there is an active Internet connection.
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`II. Motion for Extension of the Due Dates of the Proceedings
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`
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`If Patent Owner is unsuccessful in negotiating an extension of due dates 1
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`and 2 with Petitioner, Patent Owner intends to seek a modification of the schedule
`
`to accommodate the fact that due date 1 (for the Patent Owner response) is
`
`
`
`3
`
`
`
`Case CBM2015-00016
`Patent 8,033,458 B2
`
`currently set as June 10, 2015, the day after the hearing in the first round cases
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`(CBM2014-00102, -00106, -00108 and -00112) by the same Petitioner.
`
`
`
`III. Coordination of Deposition Transcripts
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`Petitioner has filed a declaration in this proceeding and in multiple other
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`proceedings by the same declarant, Mr. Wechselberger. Patent Owner seeks the
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`Board’s permission (as it did in earlier CBM proceedings on patents in the same
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`patent family) to allow a single deposition to be taken of the declarant (and future
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`declarants) such that a single deposition transcript can be used in all proceedings
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`(albeit filed separately in each proceeding).
`
` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Drive
`Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7705
`Fax: (571) 765-7200
`Email: mcasey@dbjg.com
`
`
`
`
`
`4
`
`
`
`Dated: May 7, 2015
`
`
`
`
`
`
`
`
`
`Case CBM2015-00016
`Patent 8,033,458 B2
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that this PATENT OWNER’S LIST OF
`
`PROPOSED MOTIONS in CBM2015-00016 was served today, May 7, 2015, by
`
`agreement of the parties by emailing a copy to counsel for the Petitioner as
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`follows:
`
`
`
`J. Steven Baughman (steven.baughman@ropesgray.com)
`Ching-Lee Fukuda (ching-lee.fukuda@ropesgray.com)
`Megan Raymond (megan.raymond@ropesgray.com)
`ApplePTABService-SmartFlash@ropesgray.com
`
` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Drive
`Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7705
`Fax: (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`
`
`Dated: May 7, 2015
`
`5
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