`Tel: 571-272-7822
`
`Paper 42
`Entered: October 9, 2015
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`v.
`SMARTFLASH LLC,
`Patent Owner.
`
`
`
`CBM2015-00015 (Patent 8,118,221 B2)
`CBM2015-00016 (Patent 8,033,458 B2)
`
`
`
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`
`CBM2015-00015 (Patent 8,118,221 B2)
`CBM2015-00016 (Patent 8,033,458 B2)
`
`
`On October 2, 2015, we issued an order for a consolidated hearing on
`
`November 9, 2015, including a first session that covers the proceedings
`
`listed above, CBM2015-00015 and CBM2015-00016, along with
`
`CBM2015-00017 and CBM2015-00018, and a second session that covers
`
`CBM2014-00192, CBM2014-00193, CBM2014-00194, and CBM2014-
`
`00199. CBM2015-00015, CBM2014-00194, and CBM2014-00199 involve
`
`U.S. Patent No. 8,118,221 B2 (“the ’221 patent”). CBM2015-00016 and
`
`CBM2014-000192 involve U.S Patent No. 8,033,458 B2 (“the ’458 patent”).
`
`The claim under review in CBM2015-00015 is claim 1 of the
`
`’221 patent and the claims under review in CBM2015-00016 are claims 1, 6,
`
`8, 10, and 11 of the ’458 patent. CBM2015-00015, Paper 23 (“Dec.”), 21–
`
`22; CBM2015-00016, Paper 23. The patentability of these claims is the
`
`subject of the oral hearing for these cases.
`
`CBM2015-00015 is based on a petition brought by Apple. On
`
`September 25, 2015, we issued a final written decision in CBM2014-00102
`
`concluding that claims 1, 2, and 11–14 of the ’221 patent are unpatentable.
`
`CBM2014-00102, Paper 52, 43. CBM2014-00102 also was based on a
`
`petition brought by Apple. CBM2015-00016 is also based on a petition
`
`brought by Apple. On September 25, 2015, we issued a final written
`
`decision in CBM2014-00106 concluding that claim 1 of the ’458 patent is
`
`unpatentable. CBM2014-00106, Paper 52, 31. CBM2014-00106 also was
`
`based on a petition brought by Apple.
`
`35 U.S.C. § 325(e)(1) states:
`
`The petitioner in a post-grant review of a claim in a patent
`under this chapter that results in a final written decision under
`section 328(a), or the real party in interest or privy of the
`petitioner, may not request or maintain a proceeding before the
`
`2
`
`
`
`CBM2015-00015 (Patent 8,118,221 B2)
`CBM2015-00016 (Patent 8,033,458 B2)
`
`
`Office with respect to that claim on any ground that the
`petitioner raised or reasonable could have raised ruing that post-
`grant review.
`
`Based on this statutory language, we request briefing by the parties
`
`regarding whether Apple is estopped from arguing claim 1 of the ’221 patent
`
`and claim 1 of the ’458 patent at the November 9 hearing. If a party’s
`
`position is that Apple is not estopped from arguing with respect to those
`
`claims, the briefing should address whether there are any restrictions on our
`
`use of Apple’s arguments at the November 9 hearing in our final written
`
`decision in CBM2015-00015 or CBM2015-00016. Thus, we order Apple
`
`and Smartflash to file separate briefs, not exceeding seven pages, no later
`
`than October 21, 2015 describing their positions on these issues.
`
`
`
`ORDER
`
`Accordingly, it is:
`
`ORDERED that Apple and Smartflash are each ordered to file
`
`a brief, not exceeding seven pages, as described above, no later than
`
`October 21, 2015.
`
`3
`
`
`
`CBM2015-00015 (Patent 8,118,221 B2)
`CBM2015-00016 (Patent 8,033,458 B2)
`
`PETITIONER:
`
`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
`
`4
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