CBM2015-00016
`U.S. Patent No. 8,033,458
`
`
`
`
`
`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 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
`
`
`
`
`
`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 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
`
`I. RELIEF REQUESTED
`
`
`
`
`Attorney Docket No.
`104677-5008-814
`
`Pursuant to 35 U.S.C. § 325(c) and 37 C.F.R. § 42.222(b), and as discussed dur-
`
`ing the Initial Conference Call with the Board on October 29, 2014 in CBM2014-
`
`00106 (“October 29 Call”), Petitioner Apple Inc. (“Petitioner”) hereby moves for
`
`joinder of the limited grounds raised in its new Petition for Covered Business Method
`
`Patent Review (“CBM”) of United States Patent No. 8,033,458 (“the ’458 patent”)—
`
`filed concurrently with this Motion—with the already-instituted CBMs for the ’458
`
`patent, Apple Inc. v. Smartflash LLC, CBM2014-00106 and -00107, which involve the
`
`same parties and have been consolidated as CBM2014-00106. In the alternative, if the
`
`Board does not grant joinder, Petitioner requests that the Board coordinate the
`
`schedules of each proceeding such that, at minimum, the oral arguments (if requested)
`
`occur at the same time, facilitating entry of concurrent Final Written Decisions.
`
`In conjunction with this request for joinder or, alternatively, coordination, Peti-
`
`tioner respectfully requests that the Board specify a shortened response period of six
`
`(6) weeks (until December 11, 2014) in which Patent Owner Smartflash LLC (“Patent
`
`Owner”) may file a Preliminary Response to the Petition. As confirmed with the
`
`Board during the October 29 Call, Petitioner will shortly submit a proposed schedule
`
`for coordinating these proceedings after conferring with counsel for Patent Owner
`
`Smartflash LLC (“Patent Owner”) to determine whether agreement on a proposed
`
`schedule can be reached between the parties.
`
`
`
`2
`
`
`
`CBM2015-00016
`
`U.S. Patent No. 8,033,458
`
`
`II. STATEMENT OF MATERIAL FACTS
`
`Attorney Docket No.
`104677-5008-814
`
`1.
`
`On March 31, 2014, Petitioner filed two petitions for CBM review of the
`
`’458 patent for claims 1, 6-8, 10, and 11. See CBM2014-00106 and -00107, Paper 2.
`
`2.
`
`On September 30, 2014 the Board instituted trial in both of those pro-
`
`ceedings on claim 1 for grounds under 35 U.S.C. § 103, and consolidated the CBMs.
`
`Id., Paper 8 at 26-27.
`
`3.
`
`The primary prior art for the grounds instituted in CBM2014-00106 is
`
`Stefik.1 Id. at 26. The primary prior art reference for the grounds instituted in
`
`CBM2014-00107 is Ginter (Ex. 1215). Id.
`
`4.
`
`The same patent, Petitioner, and Patent Owner are involved in the al-
`
`ready-instituted CBMs (now consolidated as CBM2014-00106) and the new Petition
`
`filed concurrently with this Motion, and it is Petitioner’s understanding that the same
`
`counsel for each party from the already-instituted CBMs will represent Petitioner and
`
`Patent Owner in the new Petition proceedings.
`
`5.
`
`The new Petition challenges on prior art grounds four claims—claims 6,
`
`8, 10 and 11—that Petitioner had challenged in the earlier petitions, but that were not
`
`instituted for trial. See id. at 25-26.
`
`
`1 As discussed in the Petition, “Stefik” refers to two documents that Petitioner sub-
`
`mits should be considered a single reference—Stefik ’980 (Ex. 1214) and Stefik ‘235
`
`(Ex. 1213), which incorporates Stefik ’980 by reference.
`
`
`
`3
`
`
`
`CBM2015-00016
`U.S. Patent No. 8,033,458
`
`
`
`
`
`Attorney Docket No.
`104677-5008-814
`
`6.
`
`In particular, the new Petition asserts grounds based on 35 U.S.C. § 103
`
`for claims 6, 8, 10 and 11 using combinations of Stefik (cited by Petitioner and insti-
`
`tuted for trial in CBM2014-00106) with two other previously-cited references (Ginter
`
`and Sato (Ex.1218)) and two new references, Ahmad (Ex. 1203) and Kopp (Ex.
`
`1205).
`
`7.
`
`The new Petition also asserts a ground of invalidity based on 35 U.S.C.
`
`§ 101 for claims 6, 8, 10 and 11, as well as for claim 1 that has been instituted for trial
`
`in CBM2014-00106. Claim 11 is also challenged as indefinite under § 112.
`
`8.
`
`Petitioner relies in its new Petition on a supporting declaration from the
`
`same expert who submitted a declaration in the already-instituted CBMs.
`
`III. DISCUSSION
`
`The requested joinder will serve to secure the just, speedy, and inexpensive res-
`
`olution of these proceedings. Under 35 U.S.C. § 325(c):
`
`If more than 1 petition for a post-grant [or covered busi-
`ness method] review under this chapter is properly filed
`against the same patent and the Director determines that
`more than 1 of these petitions warrants the institution of a
`post-grant review under section 324, the Director may con-
`solidate such reviews into a single post-grant [or covered
`business method] review.
`
`In addition, 37 C.F.R. § 42.222(b) provides that “[j]oinder may be requested by a pa-
`
`tent owner or petitioner. Any request for joinder must be filed, as a motion under
`
`
`
`4
`
`
`
`CBM2015-00016
`U.S. Patent No. 8,033,458
`
`§ 42.22, no later than one month after the institution date of any post-grant [or cov-
`
`Attorney Docket No.
`104677-5008-814
`
`
`
`
`ered business method] review for which joinder is requested.” This Motion is timely
`
`under § 42.222(b) because Petitioner is filing it within one month after the September
`
`30, 2014 institution date for the already-instituted CBMs.
`
`The Board has further provided that a motion for joinder should: (1) set forth
`
`the reasons why joinder is appropriate; (2) identify any new grounds of unpatentability
`
`asserted in the petition; (3) explain what impact (if any) joinder would have on the tri-
`
`al schedule of the existing proceeding; and (4) address specifically how briefing and
`
`discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC, IPR2013-00004,
`
`Paper 15 at 4 (Apr. 24, 2013). Analysis of these factors here warrants the Board’s use
`
`of its discretion to grant the requested joinder.
`
`The existence of several similarities between the already-instituted CBMs (con-
`
`solidated as CBM2014-00106) and the new Petition supports application of joinder.
`
`The same patent, parties, and counsel are involved in both proceedings. The same
`
`expert for Petitioner is involved in both proceedings—and, presumably, Patent Own-
`
`er may use a common expert in both proceedings. Overlapping claims are at issue in
`
`both proceedings—on grounds for § 103 in the already-instituted CBMs and for § 101
`
`in the new Petition. Patent Owner has already responded to, and the Board has al-
`
`ready analyzed for institution, two prior petitions challenging every claim now at issue
`
`in the new Petition, which contain overlapping subject matter with claims already in-
`
`
`
`5
`
`
`
`CBM2015-00016
`U.S. Patent No. 8,033,458
`
`stituted for trial. And Petitioner asserts three of the same primary prior art references
`
`Attorney Docket No.
`104677-5008-814
`
`
`
`
`as in the original, already-instituted CBM trial. As noted, the new Petition also adds
`
`one ground of invalidity based on § 101 for claim 1 already instituted for review under
`
`§ 103 in CBM2014-00106 (as well as claims 6, 8, 10, and 11), the unpatentability of
`
`which was confirmed by the Supreme Court’s recent decision in Alice Corp. Pty, Ltd. v.
`
`CLS Bank Int’l, 134 S. Ct. 2347 (2014), which was decided after Petitioner’s original
`
`petitions challenging the ’458 Patent were filed.
`
`Petitioner believed, in submitting its original petitions, that it had made the re-
`
`quired showing to invalidate claims 6, 8, 10, and 11. In its September 30 Institution
`
`Decision, however, the Board determined Petitioner had not shown it was more likely
`
`than not that it would prevail in demonstrating that Stefik, in combination with other
`
`cited references, rendered obvious claim 6’s “use status data.” In light of the Board’s
`
`Decision, Petitioner now identifies in the Petition two additional prior art refer-
`
`ences—Ahmad and Kopp (Exs. 1203 and 1205)—that contain explicit disclosures of
`
`“use status data” provided by the specification of the ’458 patent. (As detailed in the
`
`Petition, Ahmad, for example, describes a software rental system that monitors an
`
`elapsed time of use recorded by a timer or a number of uses recorded by a counter to
`
`determine if a software rental license has been exhausted (see, e.g., Ex. 1203 at 2:62-
`
`3:18), while Kopp discloses checking recorded utilization data to determine if a li-
`
`censed extent of utilization for a data record has been exhausted (see, e.g., Ex. 1205 at
`
`
`
`6
`
`
`
`CBM2015-00016
`U.S. Patent No. 8,033,458
`
`6:41-47).) Petitioner has also identified additional disclosure in the previously cited
`
`Attorney Docket No.
`104677-5008-814
`
`
`
`
`Stefik reference concerning these limitations of claims 6, 8, 10, and 11, further con-
`
`firming that it would have been obvious and routine to employ the advantageous
`
`teachings of Ahmad and Kopp in implementing the system disclosed by Stefik.
`
`Given the significant overlap in subject matter and prior art, the requested
`
`joinder offers the Board and the parties significant efficiencies by permitting the prior
`
`art (and § 112) arguments to be addressed together, and by facilitating resolution of
`
`§ 101 patent eligibility of the same claims at the same time. Briefing, discovery and
`
`argument would be simplified, as would the Board’s resolution of the invalidity issues
`
`presented across these proceedings. With particular reference to discovery, Petitioner
`
`relies on the same expert in its new Petition as in its original petitions, thus making it
`
`possible to hold a single deposition of this witness for all proceedings, or at mini-
`
`mum—depending on the final schedule—to enable an abbreviated follow-on deposi-
`
`tion that could be presented for the Board’s common consideration of all invalidity
`
`issues in all proceedings. To the extent Patent Owner uses a common expert, the
`
`same will be true for that witness. Given the significant overlap in challenged subject
`
`matter (with elements common to the previously-instituted claims, including an over-
`
`lapping instituted claim, being presented in the new Petition), prior art issues and sub-
`
`ject matter eligibility issues, common discovery and briefing will enable both the par-
`
`ties and the Board to enjoy efficiencies in addressing these questions at once, rather
`
`
`
`7
`
`
`
`CBM2015-00016
`U.S. Patent No. 8,033,458
`
`than in unnecessary and duplicative serial filings and arguments.
`
`
`
`
`Attorney Docket No.
`104677-5008-814
`
`Joinder here need not have any appreciable effect on the trial schedule of the
`
`already-instituted CBMs. Indeed, Petitioner will seek to merge the Due Dates for
`
`proceedings under the new Petition with the Due Dates for the already-instituted
`
`CBMs to the extent practicable (and, as discussed in the October 29 Call, Petitioner
`
`will confer with Patent Owner to determine whether agreement can be reached on a
`
`proposed schedule to provide the Board and the parties with the efficiencies that can
`
`be realized by addressing the invalidity questions concerning the ’458 on one time-
`
`line).
`
`To accommodate joinder (or, alternatively, coordination of schedules) with the
`
`pending CBM2014-00106 trial, some compression of the general default schedule for
`
`this new Petition will be necessary. Subject to the parties’ negotiation of a possible
`
`joint proposal on schedule, Petitioner accordingly requests at the outset that the
`
`Board provide a shortened period of six (6) weeks (until December 11, 2014) for a Pa-
`
`tent Owner Preliminary Response to the new Petition. Petitioner contemplates that
`
`its own periods for response will also be compressed. Given the significant overlap of
`
`issues and evidence, however, Petitioner respectfully submits that neither party would
`
`need to be unfairly prejudiced by the shortening of these periods from the general
`
`timelines provided as a default for entirely new invalidity proceedings. In connection
`
`with the Preliminary Response, for example, Patent Owner and its counsel are already
`
`
`
`8
`
`
`
`CBM2015-00016
`U.S. Patent No. 8,033,458
`
`quite familiar with—and have already responded to two Petitions concerning—the
`
`Attorney Docket No.
`104677-5008-814
`
`
`
`
`patent and claims at issue, as well as the primary prior art reference at issue here, and
`
`Patent Owner has already briefed the threshold question of whether the patent at is-
`
`sue qualifies for a CBM review.
`
`Finally, as stated above, should the Board deny joinder, Petitioner requests in
`
`the alternative that the Board coordinate the schedules of each proceeding such that,
`
`at minimum, the oral arguments (if requested) occur together. (Again, as discussed in
`
`the October 29 Call, Petitioner will confer with Patent Owner to explore whether a
`
`proposed schedule for such coordination can be agreed.) Good cause exists to grant
`
`this alternative relief for the reasons enumerated above. In particular, given the
`
`common issues already raised in each proceeding, a somewhat-accelerated schedule
`
`will not cause undue prejudice, and holding a common argument on the same patent
`
`and claims will not only increase the efficiencies for the parties, but will also enable to
`
`Board to coordinate its determinations on these overlapping questions and its issu-
`
`ance of Final Written Decisions for each proceeding.
`
`IV. CONCLUSION
`
`For the foregoing reasons, Petitioner respectfully requests that the Board grant
`
`joinder of trial, if instituted, on the new Petition filed concurrently with this Motion,
`
`with the pending consolidated trial in CBM2014-00106, or, in the alternative, that the
`
`Board coordinate the schedules in these proceedings to allow a common oral argu-
`
`
`
`9
`
`
`
`CBM2015-00016
`U.S. Patent No. 8,033,458
`
`ment and Final Written Decisions. In addition, Petitioner respectfully requests a
`
`Attorney Docket No.
`104677-5008-814
`
`
`
`
`shortened period of six (6) weeks (until December 11, 2014) for a Patent Owner Pre-
`
`liminary Response.
`
`Respectfully submitted,
`
`
`
`
`
`By:/J. Steven Baughman/
`J. Steven Baughman (Lead Counsel)
`Megan Raymond
`ROPES & GRAY LLP
`
`
`
`
`
`
`October 30, 2014
`
`
`
`
`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.
`
`
`
`10
`
`
`
`CBM2015-00016
`U.S. Patent No. 8,033,458
`
`
`
`
`
`Attorney Docket No.
`104677-5008-814
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that a copy of PETITIONER’S MO-
`
`TION FOR JOINDER UNDER 35 U.S.C. § 325(c) AND 27 C.F.R. § 42.222(b)
`
`AND REQUEST FOR SHORTENED RESPONSE TIME FOR PATENT OWN-
`
`ER’S PRELIMINARY RESPONSE was served on October 30, 2014, by causing the
`
`aforementioned documents to be deposited in the United States Postal Service as Ex-
`
`press Mail postage pre-paid in an envelope addressed to:
`
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`4300 Wilson Blvd., 7th Floor
`Arlington, VA 22203
`
`(Label No. EF 070 057 727 US)
`
`Attorneys for Patent Owner Smartflash LLC
`
`
`
`
`
`
`s/Megan Raymond
`Megan Raymond
`
`
`
`ROPES & GRAY LLP
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
