Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 58
`Entered: June 9, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-000161
`Patent 8,033,458 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`1 Apple Inc. has been dismissed as Petitioner from this proceeding with
`respect to claim 1. Paper 50.
`
`
`Tel: 571-272-7822
`
`Paper 58
`Entered: June 9, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-000161
`Patent 8,033,458 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`1 Apple Inc. has been dismissed as Petitioner from this proceeding with
`respect to claim 1. Paper 50.
`
`
`
`CBM2015-00016
`Patent 8,033,458 B2
`
`INTRODUCTION
`Apple Inc. (“Petitioner”), filed a Corrected Petition to institute
`covered business method patent review of claims 1, 6, 8, 10, and 11 of U.S.
`Patent No. 8,033,458 B2 (Ex. 1201, “the ’458 patent”) pursuant to § 18 of
`the Leahy-Smith America Invents Act (“AIA”).2 Paper 9 (“Pet.”). On April
`10, 2015, we instituted a transitional covered business method patent review
`(Paper 23, “Institution Decision” or “Inst. Dec.”) based upon Petitioner’s
`assertion that claims 1, 6, 8, and 10 are directed to patent ineligible subject
`matter under 35 U.S.C. § 101 and that claim 11 is unpatentable under 35
`U.S.C. § 112 ¶ 2.3 Inst. Dec. 26. Subsequent to institution, Smartflash LLC
`(“Patent Owner”) filed a Patent Owner Response (Paper 33, “PO Resp.”)
`and Petitioner filed a Reply (Paper 35, “Pet. Reply”) to Patent Owner’s
`Response.
`In our Final Decision, we terminated with respect to claim 1, which
`had already been finally cancelled, and we determined that Petitioner had
`established, by a preponderance of the evidence, that claims 6, 8, 10, and 11
`of the ’458 patent are unpatentable. Paper 56 (“Final Dec.”), 3, 29. Patent
`Owner requests rehearing of the Final Decision. Paper 57 (“Request” or
`“Req. Reh’g”). Having considered Patent Owner’s Request, we decline to
`modify our Final Decision.
`
`
`
`2 Pub. L. No. 112-29, 125 Stat. 284, 296–07 (2011).
`3 Petitioner cites 35 U.S.C. § 112(b). We note, however, that the ’458 patent
`was filed in 2010 (prior to application of the AIA). The pre-AIA laws,
`therefore, apply to the challenges to the ’458 patent.
`
`2
`
`
`
`CBM2015-00016
`Patent 8,033,458 B2
`
`STANDARD OF REVIEW
`In covered business method review, the petitioner has the burden of
`showing unpatentability by a preponderance of the evidence. 35 U.S.C.
`§ 326(e). The standard of review for rehearing requests is set forth in 37
`C.F.R. § 42.71(d), which states:
`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, an opposition, or a reply.
`
`
`ANALYSIS
`Patent Owner’s Request is based on a disagreement with our
`determination that claims 6, 8, and 10 (“the challenged claims”) are directed
`to patent-ineligible subject matter. Req. Reh’g 2. In its Request, Patent
`Owner presents arguments directed to alleged similarities between the
`challenged claims and those at issue in DDR Holdings, LLC v. Hotels.com,
`L.P., 773 F.3d 1245 (Fed. Cir. 2014) (Req. Reh’g 5–9) and alleged
`differences between the challenged claims and those at issue in Alice Corp.
`Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347 (2014) (id. at 10–15).
`As noted above, our rules require that the requesting party
`“specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each matter was
`previously addressed in a motion, an opposition, or a reply.” 37 C.F.R.
`42.71(d) (emphasis added). In its Request, however, Patent Owner does not
`identify any specific matter that we misapprehended or overlooked. Rather,
`the only citation to Patent Owner’s previous arguments are general citations,
`
`3
`
`
`
`CBM2015-00016
`Patent 8,033,458 B2
`
`without explanation as to how we misapprehended or overlooked any
`particular matter in the record. For example, with respect to Patent Owner’s
`arguments regarding DDR Holdings, Patent Owner simply notes that
`“[p]ursuant to 37 C.F.R. § 42.71(d), the issue of whether the challenged
`claims were similar to those in DDR Holdings was previously addressed.
`See PO Resp. 11–12, 18–19; Ex. 2049, 19.” Request 6 n.3. Similarly, in
`Patent Owner’s arguments regarding Alice, Patent Owner simply notes that
`“[p]ursuant to 37 C.F.R. § 42.71(d), the issue of whether the claims are
`abstract ideas was previously addressed. See PO Resp. 10-27; see also Tr.
`46:21-47:11” (id. at 11 n.5) and “[p]ursuant to 37 C.F.R. § 42.71(d), the
`issue of whether the challenged claims contain ‘additional features’ beyond
`an abstract idea was previously addressed. See PO Resp. 11-12, 18-19; Ex.
`2049, 19” (id. at 12 n.7). These generic citations to large portions of the
`record do not identify, with any particularity, specific arguments that we
`may have misapprehended or overlooked.
`Rather than providing a proper request for rehearing, addressing
`particular matters that we previously misapprehended or overlooked, Patent
`Owner’s Request provides new briefing by expounding on argument already
`made. Patent Owner cannot simply allege that an “issue” (e.g., whether the
`claims are directed to an abstract idea) was previously addressed, generally,
`and proceed to present new argument on that issue in a request for rehearing.
`See 37 C.F.R. § 42.71.
`Patent Owner’s arguments are either new or were addressed in our
`Final Decision. For example, Patent Owner’s argument that the challenged
`claims are not directed to an abstract idea (Req. Reh’g 10–12) is new, and
`therefore, improper in a request for rehearing, because Patent Owner did not
`
`4
`
`
`
`CBM2015-00016
`Patent 8,033,458 B2
`
`argue the first step of the analysis articulated in Mayo and Alice in its Patent
`Owner Response (see Paper 33 (PO Resp.) passim (arguing only the second
`step of the Mayo and Alice test)). To the extent portions of the Request are
`supported by Patent Owner’s argument in the general citations to the record,
`we considered those arguments in our Final Decision, as even Patent Owner
`acknowledges. See, e.g., Req. Reh’g 6 (citing Fin. Dec. 16) (“The Board
`rejected Patent Owner’s reliance on DDR Holdings (at 16), holding that the
`challenged claims were not ‘rooted in computer technology in order to
`overcome a problem specifically arising in the realm of computer
`networks.’”). For example, Patent Owner’s arguments about inventive
`concept (Req. Reh’g 5–6, 12–15) were addressed at pages 9–14 of our Final
`Decision, Patent Owner’s arguments about preemption (Req. Reh’g. 6) were
`addressed at pages 17–20 of our final Decision, and Patent Owner’s
`arguments about DDR Holdings (Req. Reh’g. 6–10) were addressed at pages
`14–17 of our Final Decision. Mere disagreement with our Final Decision
`also is not a proper basis for rehearing.
`Accordingly, Patent Owner’s Request does not apprise us of sufficient
`reason to modify our Final Decision.
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that Patent Owner’s Request is denied.
`
`5
`
`
`
`
`
`CBM2015-00016
`Patent 8,033,458 B2
`
`PETITIONER:
`J. Steven Baughman
`Ching-Lee Fukuda
`Megan Raymond
`Ropes & Gray LLP
`steven.baughman@ropesgray.com
`ching-lee.fukuda@ropesgray.com
`Megan.raymond@ropesgray.com
`
`PATENT OWNER:
`
`Michael R. Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`mcasey@dbjg.com
`jsd@dbjg.com
`
`
`
`6
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