Paper 52
`Entered: December 1, 2015
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`APPLE INC.1,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`_______________
`
`Case CBM2015-00016
`Patent 8,033,458 B2
`_______________
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`
`PLENZLER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Patent Owner’s Request for Rehearing, Request for Leave to File Motion to
`Terminate, and Request for Oral Hearing
`37 C.F.R. §§ 42.5, 42.71
`
`
`1 Apple, Inc. has been dismissed from this proceeding with respect to claim
`1. Paper 50.
`
`
`Entered: December 1, 2015
`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`APPLE INC.1,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`_______________
`
`Case CBM2015-00016
`Patent 8,033,458 B2
`_______________
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`
`PLENZLER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Patent Owner’s Request for Rehearing, Request for Leave to File Motion to
`Terminate, and Request for Oral Hearing
`37 C.F.R. §§ 42.5, 42.71
`
`
`1 Apple, Inc. has been dismissed from this proceeding with respect to claim
`1. Paper 50.
`
`
`
`CBM2015-00016
`Patent 8,033,458 B2
`
`
`A. Background
`
`INTRODUCTION
`
`On November 16, 2015, Patent Owner, Smartflash LLC, filed a
`
`Request for Rehearing of our order issued in this proceeding on November 5,
`
`2015 (Paper 50, “Estoppel Order”), a Renewed Request for Leave to File a
`
`Motion to Terminate, and a Conditional Request for Oral Hearing. Paper 51
`
`(“Request”). In its Request, Patent Owner alleges error in portions of the
`
`Estoppel Order, which dismissed Apple, Inc. as Petitioner in this proceeding
`
`with respect to claim 1 of U.S. Patent No. 8,033,458 (“the ’458 patent”).
`
`Request 5–14. Specifically, Patent Owner contends that (1) the Board does
`
`not have statutory authority to proceed without a Petitioner (id. at 5–12),
`
`(2) Patent Owner should be granted leave to file a motion to terminate (id. at
`
`12–13), and (3) Patent Owner is entitled to a hearing if the Board proceeds
`
`with the trial (id. at 13).
`
`With respect to Patent Owner’s Request for Rehearing, our rules state
`
`that “[t]he burden of showing a decision should be modified lies with the
`
`party challenging the decision” and require that “[t]he request must
`
`specifically identify all matters the party believes the Board misapprehended
`
`or overlooked, and the place where each matter was previously addressed in
`
`a motion, an opposition, or a reply.” 37 C.F.R. § 42.71(d).
`
`In its arguments directed to the Board not having statutory authority to
`
`proceed without a petitioner, Patent Owner does not cite to anything in its
`
`Brief on Petitioner’s Estoppel (Paper 46). See Request 5–12. Patent
`
`Owner’s Request for Rehearing, therefore, does not identify “the place
`
`where each matter was previously addressed in a motion, an opposition, or a
`
`
`
`2
`
`
`
`CBM2015-00016
`Patent 8,033,458 B2
`
`reply,” as required by Rule 71(d). Accordingly, we are not persuaded that
`
`we misapprehended or overlooked these arguments.
`
`Even if we were to consider Patent Owner’s new arguments, we are
`
`not persuaded that we do not have statutory authority to proceed without a
`
`petitioner. Patent Owner argues, for example, that “[t]he Federal Circuit’s
`
`decision in Progressive is inapposite” because “[i]n that case, unlike here,
`
`the Patent Owner was arguing for the instantaneous application of
`
`§ 325(e)(1) such that it ‘bar[red] the Board’s entry of its CBM 2013-9
`
`decision because the Board posted that decision to its electronic docketing
`
`system just over an hour after, but the same day as, it posted the CBM 2012-
`
`3 decision.’” Request 7 (citing Progressive Cas. Ins. Co. v. Liberty Mut. Ins.
`
`Co., No. 2014-1466, 2015 WL 5004949, at *2 (Fed. Cir. Aug. 24, 2015)
`
`(nonprecedential)). We disagree. In Progressive, the Federal Circuit
`
`addressed not only when a final decision has estoppel effect on a petitioner,
`
`but also whether that estoppel effect imposes any limitation on the Board’s
`
`ability to reach a decision. See Progressive, 2015 WL 5004949, at *2
`
`(Ҥ 325(e)(1) by its terms does not prohibit the Board from reaching
`
`decisions. It limits only certain (requesting or maintaining) actions by a
`
`petitioner. Nothing in the provision, or chapter 32 more generally, equates
`
`that limitation on a petitioner with Board authority to enter a decision.”).
`
`Patent Owner’s arguments regarding IPR2014-01465 are also
`
`unpersuasive. See Request 8–10. For example, Patent Owner fails to note
`
`that the decision in that proceeding specifically stated that Ҥ 315(e)(1) by
`
`its terms does not prohibit the Board from reaching a final written decision.”
`
`International Business Machines Corp. v. Intellectual Ventures II, LLC,
`
`Case IPR2014-01465, slip op. at 9 (PTAB Nov. 6, 2015) (Paper 32). Rather,
`
`
`
`3
`
`
`
`CBM2015-00016
`Patent 8,033,458 B2
`
`the panel noted that Ҥ 315(e)(1) does not mandate that the Board reach a
`
`final written decision” and based the decision to terminate that proceeding
`
`on the panel’s discretion, considering the specific facts of that case, which
`
`are not the same as those before us in this proceeding. See id.
`
`Patent Owner’s request for leave to file a Motion to Terminate is
`
`denied for the reasons previously set forth in our Estoppel Order. See Paper
`
`50, 5–6.
`
`Finally, Patent Owner’s request for a second oral hearing in this
`
`proceeding is denied. Patent Owner fails to provide any explanation as to
`
`why it was denied an oral hearing with respect to claim 1 of the ’458 patent
`
`on November 9, 2015.
`
`
`
`For the reasons given, it is:
`
`ORDER
`
`ORDERED that Patent Owner’s Request for Rehearing is denied;
`
`FURTHER ORDRERED that Patent Owner’s request for
`
`authorization to file a motion to terminate this proceeding with respect to
`
`claim 1 of the ’458 patent is denied; and
`
`FURTHER ORDERED that Patent Owner’s request for a second oral
`
`hearing in this proceeding with respect to claim 1 of the ’458 patent is
`
`
`
`4
`
`denied.
`
`
`
`
`
`
`
`CBM2015-00016
`Patent 8,033,458 B2
`
`PETITIONER:
`
`J. Steven Baughman
`Ching-Lee Fukuda
`Megan Raymond
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`ching-lee.fukuda@ropesgray.com
`Megan.raymond@ropesgray.com
`
`
`
`PATENT OWNER:
`
`Michael R. Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`mcasey@dbjg.com
`jsd@dbjg.com
`
`
`
`
`5
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