`Tel: 571-272-7822 Paper 6 (CBM2015-00016), Paper 14 (CBM2014-00106)
` Paper 6 (CBM2015-00017), Paper 14 (CBM2014-00108)
` Paper 4 (CBM2015-00018), Paper 13 (CBM2014-00112)
` Entered: November 13, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`CBM2015-00015, CBM2014-00102 (Patent 8,118,221 B2)
`CBM2015-00016, CBM2014-00106 (Patent 8,033,458 B2)
`CBM2015-00017, CBM2014-00108 (Patent 8,061,598 B2)
` CBM2015-00018, CBM2014-00112 (Patent 7,942,317 B2) 1
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, JEREMY M.
`PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`ORDER
`
`1 This order addresses issues that are the same in all identified cases. We
`exercise our discretion to issue one order to be filed in each case. The parties,
`however, are not authorized to use this style heading in subsequent papers.
`
`
`
`CBM2015-00015, CBM2014-00102 (Patent 8,118,221 B2)
`CBM2015-00016, CBM2014-00106 (Patent 8,033,458 B2)
`CBM2015-00017, CBM2014-00108 (Patent 8,061,598 B2)
`CBM2015-00018, CBM2014-00112 (Patent 7,942,317 B2)
`
`A teleconference was held on Friday, November 7, 2014, among Steven
`Baughman and Ching-Lee Fukuda, representing Petitioner; Michael Casey
`and Scott Davidson, representing Patent Owner; and Judges Bisk, Elluru,
`Plenzler, and Clements.
`Both Petitioner and Patent Owner requested the teleconference.
`Petitioner filed three petitions, CBM2015-00015, CBM2015-00016, and
`CBM2015-00017 (“the 2015 set of petitions”), concurrently with motions for
`joinder or coordination of schedules with CBM2014-00102, CBM2014-
`00106, and CBM2014-00108 (“the 2014 set of petitions”). Petitioner also
`filed CBM2015-00018 (part of the 2015 set of petitions), which challenges the
`same patent as CBM2014-00112, without a motion for joinder, but Petitioner
`represented that it would like to coordinate the schedule of these two cases as
`well. Petitioner requested that we shorten the due dates for the Patent Owner
`Preliminary Response in CBM2015-00015, CBM2015-00016, CBM2015-
`00017, and CBM2015-00018, to which Patent Owner objected.
`The 2015 set of petitions assert substantially overlapping arguments and
`prior art as asserted in the 2014 set of petitions, as well as challenges pursuant
`to 35 U.S.C. § 101, which raise purely legal issues. Given that we may need to
`coordinate schedules should we institute trials in the 2015 set of petitions, we
`expedited the due date for the Patent Owner Preliminary Responses in
`CBM2015-00015, CBM2015-00016, CBM2015-00017, and CBM2015-00018
`to December 15, 2014. We also indicated that we would extend the due date
`for the Patent Owner Responses in CBM2014-00102, CBM2014-00106,
`CBM2014-00108, and CBM2014-00112. The extended due date for these
`cases will be determined in due course.
`
`2
`
`
`
`CBM2015-00015, CBM2014-00102 (Patent 8,118,221 B2)
`CBM2015-00016, CBM2014-00106 (Patent 8,033,458 B2)
`CBM2015-00017, CBM2014-00108 (Patent 8,061,598 B2)
`CBM2015-00018, CBM2014-00112 (Patent 7,942,317 B2)
`
`Patent Owner requested authorization to file a motion for additional
`discovery on Apple’s products, servers for “iTunes” and “App Store.” Patent
`Owner asserted that it would like to show that Apple’s products are covered
`by its claims, and thus, that the discovery sought relates to commercial
`success. Patent Owner, however, stated that it has “very little” evidence that
`certain products read on the claims. Petitioner responded that Patent Owner
`seeks very broad categories of discovery, the related district court case is
`addressing the infringement allegations, there has been 6 million pages of
`documents produced in that case, and if we were to grapple with the
`infringement issue then we would have a “trial within a trial” with respect to
`infringement. Petitioner also alleged that Patent Owner has not met a
`threshold showing of nexus between the claims and the alleged commercial
`success of Apple’s products. We denied Patent Owner’s request for
`authorization to file a motion for additional discovery given that Patent Owner
`has not made a threshold showing as to infringement or nexus with
`commercial success.
`It is:
`ORDERED that the due date for the Patent Owner Preliminary
`Response in CBM2015-00015, CBM2015-00016, CBM2016-00017, and
`CBM2015-00018 is December 15, 2014; and
`FURTHER ORDERED that Patent Owner is not authorized to file a
`motion for additional discovery.
`
`3
`
`
`
`CBM2015-00015, CBM2014-00102 (Patent 8,118,221 B2)
`CBM2015-00016, CBM2014-00106 (Patent 8,033,458 B2)
`CBM2015-00017, CBM2014-00108 (Patent 8,061,598 B2)
`CBM2015-00018, CBM2014-00112 (Patent 7,942,317 B2)
`
`PETIONER:
`
`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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