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`Trials@uspto.gov
`571-272-7822
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`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
` ____________
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`Mailed: November 14, 2014
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`Before ANDREW KELLOGG, Trial Paralegal
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`
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`
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`NOTICE OF FILING DATE ACCORDED TO PETITION
`AND
`TIME FOR FILING PATENT OWNER PRELIMINARY RESPONSE
`
`
`The petition for covered business method patent review in the above
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`proceeding has been accorded the filing date of October 30, 2014.
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`A review of the petition identified the following defect(s):
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`
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`Case CBM2015-00016
`Patent 8,033,458
`
`
`Improper usages of claim charts: Although claim charts are
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`permitted, the purpose of claim charts is to assist petitioners to specify where
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`each claim limitation is found in the prior art references relied upon. Claim
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`charts should be presented in a readable manner and be free from attorney
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`argument. Presenting attorney argument in the claim charts circumvents the
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`60-page limit set forth in 37 C.F.R. § 42.24.
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`Petitioner must correct the defect(s) within FIVE BUSINESS DAYS
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`from this notice. Failure to correct the defect(s) may result in an order to
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`show cause as to why the Board should institute the trial. No substantive
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`changes (e.g., new grounds) may be made to the petition.
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`Patent Owner may file a preliminary response to the petition no later
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`than three months from the date of this notice. The preliminary response is
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`limited to setting forth the reasons why the requested review should not be
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`instituted. Patent Owner may also file an election to waive the preliminary
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`response to expedite the proceeding. For more information, please consult
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`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012),
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`which is available on the Board Web site at http://www.uspto.gov/PTAB.
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`Patent Owner is advised of the requirement to submit mandatory
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`notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of
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`the petition.
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`The parties are encouraged to use the heading on the first page of this
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`Notice for all future filings in the proceeding.
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`The parties are advised that under 37 C.F.R. § 42.10(c), recognition of
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`counsel pro hac vice requires a showing of good cause. The parties are
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`authorized to file motions for pro hac vice admission under 37 C.F.R.
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`2
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`Case CBM2015-00016
`Patent 8,033,458
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`§ 42.10(c). Such motions shall be filed in accordance with the “Order --
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`Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639,
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`Paper 7, a copy of which is available on the Board Web site under
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`“Representative Orders, Decisions, and Notices.”
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`The parties are reminded that unless otherwise permitted by 37 C.F.R.
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`§ 42.6(b)(2), all filings in this proceeding must be made electronically in the
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`Patent Review Processing System (PRPS), accessible from the Board Web
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`site at http://www.uspto.gov/PTAB. To file documents, users must first
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`obtain a user ID and password by registering with PRPS. Information
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`regarding how to register with and use PRPS is available at the Board Web
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`site.
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`If there are any questions pertaining to this notice, please contact
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`Andrew Kellogg at 571-272-5366 or the Patent Trial and Appeal Board at
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`571-272-7822.
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`3
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`Case CBM2015-00016
`Patent 8,033,458
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`PETITIONER:
`
`J. Steven Baughman
`Ching-Lee Fukuda
`Ropes & Gray LLP
`steven.baughman@ropesgray.com
`ching-lee.fukuda@ropesgray.com
`
`
`
`PATENT OWNER:
`
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`4300 Wilson Blvd., 7th Floor
`Arlington, VA 22203
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