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
`____________
`
`
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION FOR
`JOINDER OR, IN THE ALTERNATIVE, FOR COORDINATION OF
`SCHEDULE
`
`
`
`
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`APPLE, INC.
`Petitioner
`v.
`SMARTFLASH LLC
`Patent Owner
`____________
`Case CBM2015-00016
`Patent 8,033,458
`____________
`
`
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION FOR
`JOINDER OR, IN THE ALTERNATIVE, FOR COORDINATION OF
`SCHEDULE
`
`
`
`
`
`Table of Contents
`
`I.
`
`II.
`
`Introduction ...................................................................................................... 1
`
`Response to Statement of Material Facts ........................................................ 2
`
`III. Statement of Material Facts ............................................................................. 3
`
`IV. Discussion ........................................................................................................ 3
`
`A.
`
`B.
`
`Joinder Requires a Properly Filed Petition ............................................ 5
`
`The Trial Schedules Should Not Be Consolidated ................................ 8
`
`Recently Filed Petitions Show That Advancing the Schedule of This
`C.
`Proceeding Is Pre-Mature As Later-Filed Petitions Exist ............................... 8
`
`V.
`
`Conclusion ..................................................................................................... 10
`
`i
`
`
`
`
`
`
`
`I.
`
`Introduction
`
`On October 30, 2014, including the Petition for this proceeding, Petitioner
`
`filed three CBM Petitions (CBM2015-00015 to -00017) (“the initial 2015
`
`Petitions”) in addition to the twelve CBM Petitions (CBM2014-00102 to -00113)
`
`(“the 2014 Petitions”) that Petitioner had previously filed. Also on October 30,
`
`2014, Petitioner filed a Motion for Joinder Under 35 U.S.C. 325(c) and 37 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 (Paper 3).
`
`Petitioner filed the initial 2015 Petitions on the last possible day to seek
`
`consolidation with the proceedings instituted for CBM2014-00102, -00106, and -
`
`00108. On November 3, 2014, Petitioner filed its Petition in CBM2015-00018.
`
`During a conference call on November 7, 2014, Patent Owner objected to
`
`the shortening of Patent Owner’s Time for its Preliminary Response (Paper 6, page
`
`2). By its Order on November 13, 2014 (“the November Scheduling Order”), the
`
`PTAB ultimately set December 15, 2014 as the shortened due date for Patent
`
`Owner’s Preliminary response when it held:
`
`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
`
`
`
`1
`
`
`
`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.
`
`(Id.) (Emphasis added.)
`
`Given that the November Scheduling Order states “that we may need to
`
`coordinate schedules should we institute trials in the 2015 set of petitions,” (id.)
`
`the PTAB has only ruled on the portion of the Motion related to Petitioner’s
`
`Request for Shortened Response Time For Patent Owner’s Preliminary Response.
`
`Accordingly, Patent Owner files this Opposition to the portion of the Motion
`
`related to Joinder Under 35 U.S.C. 325(c) and 37 C.F.R. 42.222(b) or in the
`
`Alternative, For Coordination of Schedule.
`
`
`
`II. Response to Statement of Material Facts
`
`1.-4. Admitted.
`
`
`
`2
`
`
`
`5.
`
`Denied. To the extent that Petitioner is implying that it has properly
`
`filed a Petition challenging those grounds, Patent Owner denies that such a Petition
`
`has been properly filed in this proceeding.
`
`6. Denied. To the extent that Petitioner is implying that it has properly
`
`filed a Petition challenging those grounds, Patent Owner denies that such a Petition
`
`has been properly filed in this proceeding.
`
`7. Denied. To the extent that Petitioner is implying that it has properly
`
`filed a Petition that relies on such a supporting declaration, Patent Owner denies
`
`that such a Petition has been properly filed in this proceeding.
`
`
`
`III. Statement of Material Facts
`
`
`
`1.
`
`Exhibit 2002 is a true and accurate copy of a redline document,
`
`received by Patent Owner from the Petitioner, of the original Petition filed October
`
`30, 2014 as compared to the Corrected Petition filed November 21, 2014.
`
`
`
`IV. Discussion
`
`Petitioner alleges that the “requested joinder will serve to secure the just,
`
`speedy, and inexpensive resolution of these proceedings,” (Motion at 4) but the
`
`conduct of Petitioner, through the protracted filing of its multitude of Petitions, has
`
`ensured that these proceedings will be anything but inexpensive, speedy and just.
`
`
`
`3
`
`
`
`The Petitioner cannot really believe that its behavior is resulting in inexpensive
`
`proceedings when it has, to-date, filed 21 CBM Petitions alleging invalidity of only
`
`six patents. Had all 21 CBM Petitions been granted, at $30,000 per instituted
`
`CBM proceeding, Petitioner would have been expending $630,000 in government
`
`fees alone. Perhaps Petitioner feels that this is inexpensive, but, in reality, such an
`
`enormous cost represents the filing, search, examination and issue fees for nearly
`
`250 patent applications at an undiscounted rate and filing, search, examination and
`
`issue fees for nearly 500 patent applications at a small entity rate.
`
`As for “speedy,” Petitioner has stretched out these 21 filings over an eight
`
`month period. Moreover, Petitioner may have plans to file yet more Petitions as its
`
`most recent five Petitions were filed within the last week. Furthermore, Petitioner
`
`has indicated that it hopes to continue its litany of filings by seeking permission to
`
`file yet another paper relating to its allegations of unpatentability in the
`
`proceedings of the initial 2015 Petitions as well as in CBM2015-00018.
`
`Furthermore, as for “just,” Petitioner has used its economic power to file
`
`three, four or five Petitions per patent in an effort to get the Patent and Trademark
`
`Office (“PTO”) to invalidate patents that the PTO has already held are patentable.
`
`Moreover, Petitioner has requested shortened periods for the Patent Owner to
`
`respond over the objections of the Patent Owner and knowing that there are an
`
`additional 10 Petitions filed by other third-party petitioners.
`
`
`
`4
`
`
`
`
`
`A.
`
`Joinder Requires a Properly Filed Petition
`
`As specified in 35 U.S.C. 325(c), “If more than 1 petition for a post-grant
`
`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 consolidate such reviews into a
`
`single post-grant review.” (Emphasis added.) Thus, as a precondition to
`
`consolidating this proceeding with any of the 2014 Petitions, the Petition in this
`
`proceeding must be “properly filed.” As a properly filed Petition does not exist in
`
`this proceeding, there can be no consolidation.
`
`On November 14, 2014, the day after the November Scheduling Order, the
`
`PTAB issued a Notice of Filing Date Accorded to Petition which included a
`
`“notice of defects” in the Petition. (Paper 7, pages 1-2.) The Notice identified the
`
`following as defects:
`
`Improper usages of claim charts: Although claim charts are
`
`permitted, the purpose of claim charts is to assist petitioners to specify
`
`where each claim limitation is found in the prior art references relied
`
`upon. Claim charts should be presented in a readable manner and be
`
`free from attorney argument. Presenting attorney argument in the
`
`claim charts circumvents the ... page limit[s].
`
`
`
`5
`
`
`
`(Id.)
`
`The Notice further set a time period for responding and limitations on what
`
`could be in the corrected petition. Specifically, the Notice states:
`
`Petitioner must correct the defect(s) within FIVE BUSINESS
`
`DAYS from this notice. Failure to correct the defect(s) may result in
`
`an order to show cause as to why the Board should institute the trial.
`
`No substantive changes (e.g., new grounds) may be made to the
`
`petition.
`
`(Id. at 2.) In response, Petitioner filed what is asserted to be a “Corrected
`
`Petition,” which footnote 1 alleges is resubmitted “to address formality issues
`
`identified therein.” However, if that footnote is intended to mean that the changes
`
`in the “Corrected Petition” as compared to the defective Petition are limited to
`
`changes in the claim charts that impermissibly included attorney argument, then
`
`Patent Owner submits that the “Corrected Petition” is no such thing. If that
`
`footnote is intended to mean instead that Petitioner removed impermissible
`
`attorney argument from the claim chart (e.g., by putting it in footnotes instead)
`
`while simultaneously granting itself the right to rewrite the rest of the Petition too,
`
`then that is closer to reality.
`
`Exhibit 2002 is a true and accurate copy of a redline document, received by
`
`Patent Owner from the Petitioner, of the original Petition as compared to the
`
`
`
`6
`
`
`
`“Corrected Petition.” The deletions from the original Petition are shown using
`
`“strike-through” and additions are shown using underlining. As can been seen
`
`throughout Exhibit 2002, the changes are not limited to the claim charts but rather
`
`pervade the entirety of the Petition. If Petitioner believed that there were clerical
`
`or typographical mistakes in the Petition, Petitioner was free to seek permission
`
`from the PTAB to correct any such clerical or typographical mistakes under 37
`
`C.F.R. 42.304(c) (“A motion may be filed that seeks to correct a clerical or
`
`typographical mistake in the petition. The grant of such a motion does not change
`
`the filing date of the petition.”). The Petitioner has not filed such a motion, nor
`
`even met and conferred about the filing of such a motion, and, in fact, Petitioner
`
`could not plausibly argue that the changes are to correct clerical or typographical
`
`mistakes. Nor has Petitioner filed a Motion to make any other changes to the
`
`Petition. Without the PTAB’s prior permission, the highly modified “Corrected
`
`Petition” is not authorized and cannot be the basis for a Motion for Joinder.
`
`Alternatively, if the PTAB assigns a new filing date for the Corrected Petition, it
`
`will be after the period for requesting joinder had expired. In either case,
`
`Petitioner’s Motion for Joinder should be denied.
`
`
`
`
`
`7
`
`
`
`B.
`
`The Trial Schedules Should Not Be Consolidated
`
`As an alternative to joinder, Petitioner allegedly is seeking to coordinate the
`
`schedules of any Proceeding that might be instituted for its “Corrected Petition”
`
`with the proceedings from the 2014 Petitions for the same patent. Specifically, the
`
`Petitioner has requested 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.” Motion at 2.
`
`Such a request is really nothing more than an additional request for consolidation
`
`under 35 U.S.C. 325(c), but with a different name and albeit with separate written
`
`decisions. Given that they are really the same request twice, like the correctly
`
`named Motion for Joinder, the inaptly named Motion for Coordination of
`
`Schedules is untimely or for an improperly filed Petition and should be denied.
`
`
`
`
`
`C.
`
`Recently Filed Petitions Show That Advancing the Schedule of This
`Proceeding Is Pre-Mature As Later-Filed Petitions Exist
`
`As one of the primary reasons for seeking joinder, Petitioner alleges that
`
`“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 minimum -- depending on the
`
`final schedule -- to enable an abbreviated follow-on deposition that could be
`
`
`
`8
`
`
`
`presented for the Board’s common consideration of all invalidity issues in all
`
`proceedings.” (Emphasis added.) However, after Petitioner made that allegation
`
`Petitioner filed another 5 CBM Petitions (CBM2015-00028 and -00029 on
`
`November 24, 2014 for U.S. Patent No. 7,334,720 and CBM2015-00031, -00032
`
`and -00033 on November 25, 2014 for U.S. Patent No. 8,336,772). Those five
`
`CBM Petitions also utilize the same declarant but are not entitled to joinder with
`
`any other proceeding as the previous four Petitions for the respective two patents
`
`were denied in their entirety in CBM2014-00104, -00105, -00110 and -00111.
`
`Given that those Petitions will not be on the same schedule as the schedule for the
`
`2014 Petitions, there is no need to rush the present proceeding when there are a
`
`number of other later-filed proceedings that this proceeding could be combined
`
`with, if this proceeding is to be instituted at all.
`
`
`
`9
`
`
`
`
`
`
`
`V. Conclusion
`
`Petitioner’s request for joinder or consolidation of schedule should be denied
`
`as it will not serve to secure the just, speedy and inexpensive resolution of these
`
` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson &
`
`Gowdey, LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
`Telephone: (703) 894-6406
`Fax: (703) 894-6430
`Email: mcasey@dbjg.com
`
`
`proceedings.
`
`
`Dated: December 1, 2014
`
`
`
`10
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that PATENT OWNER’S OPPOSITION
`
`TO PETITIONER’S MOTION FOR JOINDER OR, IN THE ALTERNATIVE,
`
`FOR COORDINATION OF SCHEDULE, Exhibit List and Exhibit 2002 were
`
`served today, by agreement of the parties, by emailing copies to lead counsel and
`
`back-up counsel at their email addresses of record as follows:
`
`Ching-Lee Fukuda
`ching-lee.fukuda@ropesgray.com
`
` /
`
`J. Steven Baughman
`steven.baughman@ropesgray.com
`
`
`
`Dated: December 1, 2014
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson &
`
`Gowdey, LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
`Telephone: (703) 894-6406
`Fax: (703) 894-6430
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`11
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