Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 49
`Entered: June 10, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,1
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-00017
`Patent 8,061,598 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`1 Apple has been dismissed as a Petitioner. Paper 49, 8.
`
`
`Tel: 571-272-7822
`
`Paper 49
`Entered: June 10, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,1
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-00017
`Patent 8,061,598 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`DECISION
`Denying Patent Owner’s Request for Rehearing
`37 C.F.R. § 42.71
`
`
`
`
`
`1 Apple has been dismissed as a Petitioner. Paper 49, 8.
`
`
`
`CBM2015-00017
`Patent 8,061,598 B2
`
`INTRODUCTION
`Apple Inc. (“Petitioner”), filed a Corrected Petition to institute
`covered business method patent review of claims 1, 2, 7, 15, and 31 of U.S.
`Patent No. 8,061,598 B2 (Ex. 1201, “the ’598 patent”) pursuant to § 18 of
`the Leahy-Smith America Invents Act (“AIA”). Paper 9 (“Pet.”). We
`instituted a covered business method patent review (Paper 22, “Institution
`Decision” or “Inst. Dec.”) based upon Petitioner’s assertion that claims 1, 2,
`15, and 31 (“the challenged claims”) are directed to patent ineligible subject
`matter under 35 U.S.C. § 101. Inst. Dec. 19. Because we had already
`instituted a review of claim 7 under § 101 in CBM2014-00193, we declined
`to institute a review of claim 7 under this ground in this case. Id. at 16.
`Subsequent to institution, Smartflash LLC (“Patent Owner”) filed a
`Patent Owner Response (Paper 32, “PO Resp.”) and Petitioner filed a Reply
`(Paper 34, “Pet. Reply”) to Patent Owner’s Response.
`In our Final Decision, we determined that Petitioner had established,
`by a preponderance of the evidence, that claims 1, 2, 15, and 31 of the ’598
`patent are unpatentable. Paper 46 (“Final Dec.”), 26.
`Patent Owner requests rehearing of the Final Decision. Paper 48
`(“Request” or “Req. Reh’g”). Having considered Patent Owner’s Request,
`we decline to modify our Final Decision.
`
`STANDARD OF REVIEW
`In covered business method review, the petitioner has the burden of
`showing unpatentability by a preponderance of the evidence. 35 U.S.C.
`§ 326(e). The standard of review for rehearing requests is set forth in 37
`C.F.R. § 42.71(d), which states:
`The burden of showing a decision should be modified lies with
`the party challenging the decision. The request must specifically
`
`2
`
`
`
`CBM2015-00017
`Patent 8,061,598 B2
`
`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.
`
`ANALYSIS
`Patent Owner’s Request is based on a disagreement with our
`determination that claims 1, 2, and 15 (“the challenged claims”) are directed
`to patent-ineligible subject matter.2 Req. Reh’g 2. In its Request, Patent
`Owner presents arguments directed to alleged similarities between the
`challenged claims and those at issue in DDR Holdings, LLC v. Hotels.com,
`L.P., 773 F.3d 1245 (Fed. Cir. 2014) (Req. Reh’g 5–10) and alleged
`differences between the challenged claims and those at issue in Alice Corp.
`Pty. Ltd. v. CLS Bank Int’l., 134 S. Ct. 2347 (2014) (id. at 10–15).
`As noted above, our rules require that the requesting party
`“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) (emphasis added). In its Request, however, Patent Owner does not
`identify any specific matter that we misapprehended or overlooked. Rather,
`the only citation to Patent Owner’s previous arguments are general citations,
`without explanation as to how we misapprehended or overlooked any
`particular matter in the record. For example, with respect to Patent Owner’s
`arguments regarding DDR Holdings, Patent Owner simply notes that
`“[p]ursuant to 37 C.F.R. § 42.71(d), the issue of whether the challenged
`claims were similar to those in DDR Holdings was previously addressed.
`See PO Resp. 1, 10–12.” Request 7 n.3. Similarly, in Patent Owner’s
`
`
`2 Patent Owner does not seek rehearing with respect to claim 31.
`
`3
`
`
`
`CBM2015-00017
`Patent 8,061,598 B2
`
`arguments regarding Alice, Patent Owner simply notes that “[p]ursuant to 37
`C.F.R. § 42.71(d), the issue of whether the claims are abstract ideas was
`previously addressed. See PO Resp. 10–22; see also Tr. 46:21–47:11” (id. at
`10 n.5) and “[p]ursuant to 37 C.F.R. § 42.71(d), the issue of whether the
`challenged claims contain ‘additional features’ beyond an abstract idea was
`previously addressed. See PO Resp. 11–12” (id. at 12 n.7). These generic
`citations to large portions of the record do not identify, with any
`particularity, specific arguments that we may have misapprehended or
`overlooked.
`Rather than providing a proper request for rehearing, addressing
`particular matters that we previously misapprehended or overlooked, Patent
`Owner’s Request provides new briefing by expounding on argument already
`made. Patent Owner cannot simply allege that an “issue” (e.g., whether the
`claims are directed to an abstract idea) was previously addressed, generally,
`and proceed to present new argument on that issue in a request for rehearing.
`See 37 C.F.R. § 42.71.
`Patent Owner’s arguments are either new or were addressed in our
`Final Decision. For example, Patent Owner’s argument that the challenged
`claims are not directed to an abstract idea (Req. Reh’g 10–12) is new, and
`therefore, improper in a request for rehearing, because Patent Owner did not
`argue the first step of the analysis articulated in Mayo and Alice in its Patent
`Owner Response (see Paper 32 (PO Resp.) passim (arguing only the second
`step of the Mayo and Alice test)). To the extent portions of the Request are
`supported by Patent Owner’s argument in the general citations to the record,
`we considered those arguments in our Final Decision, as even Patent Owner
`acknowledges. See, e.g., Req. Reh’g 6–7 (citing Final Dec. 15) (“The Board
`
`4
`
`
`
`CBM2015-00017
`Patent 8,061,598 B2
`
`rejected Patent Owner’s reliance on DDR Holdings (at 15), holding that the
`challenged claims were not ‘rooted in computer technology in order to
`overcome a problem specifically arising in the realm of computer
`networks.’”). For example, Patent Owner’s arguments about inventive
`concept (Req. Reh’g 5–6, 12–15) were addressed at pages 9–12 and 16–18
`of our Final Decision, Patent Owner’s arguments about preemption (Req.
`Reh’g. 6) were addressed at pages 18–20 of our Final Decision, and Patent
`Owner’s arguments about DDR Holdings (Req. Reh’g. 6–10) were
`addressed at pages 12–16 of our Final Decision. Mere disagreement with
`our Final Decision also is not a proper basis for rehearing.
`Accordingly, Patent Owner’s Request does not apprise us of sufficient
`reason to modify our Final Decision.
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that Patent Owner’s Request is denied.
`
`
`
`
`5
`
`
`
`CBM2015-00017
`Patent 8,061,598 B2
`
`PETITIONER:
`J. Steven Baughman
`James R. Batchelder
`Megan F. Raymond
`Ropes & Gray LLP
`steven.baughman@ropesgray.com
`james.batchelder@ropesgray.com
`Megan.raymond@ropesgray.com
`
`PATENT OWNER:
`
`Michael Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`smartflash-cbm@dbjg.com
`jsd@dbjg.com
`
`6
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