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