CBM2015-00017
`U.S. Patent No. 8,061,598
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`Attorney Docket No.
`104677-5008-815
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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 CBM2015-00017
`Patent 8,061,598
`______________________
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`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 325(c) AND 27 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
`
`
`
`
`U.S. Patent No. 8,061,598
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`
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`
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`Attorney Docket No.
`104677-5008-815
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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 CBM2015-00017
`Patent 8,061,598
`______________________
`
`
`
`
`
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`
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`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 325(c) AND 27 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
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`
`
`
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`CBM2015-00017
`U.S. Patent No. 8,061,598
`I. RELIEF REQUESTED
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`Attorney Docket No.
`104677-5008-815
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`Pursuant to 35 U.S.C. § 325(c) and 37 C.F.R. § 42.222(b), and as discussed dur-
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`ing the Initial Conference Call with the Board on October 29, 2014 in CBM2014-
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`00108 (“October 29 Call”), Petitioner Apple Inc. (“Petitioner”) hereby moves for
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`joinder of the limited grounds raised in its new Petition for Covered Business Method
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`Patent Review (“CBM”) of United States Patent No. 8,061,598 (“the ’598 patent”)—
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`filed concurrently with this Motion—with the already-instituted CBMs for the ’598
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`patent, Apple Inc. v. Smartflash LLC, CBM2014-00108 and -00109, which involve the
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`same parties and have been consolidated as CBM2014-00108. In the alternative, if the
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`Board does not grant joinder, Petitioner requests that the Board coordinate the
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`schedules of each proceeding such that, at minimum, the oral arguments (if requested)
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`occur at the same time, facilitating entry of concurrent Final Written Decisions.
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`In conjunction with this request for joinder or, alternatively, coordination, Peti-
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`tioner respectfully requests that the Board specify a shortened response period of six
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`(6) weeks (until December 11, 2014) in which Patent Owner Smartflash LLC (“Patent
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`Owner”) may file a Preliminary Response to the Petition. As confirmed with the
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`Board during the October 29 Call, Petitioner will shortly submit a proposed schedule
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`for coordinating these proceedings after conferring with counsel for Patent Owner to
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`determine whether agreement on a proposed schedule can be reached between the
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`parties.
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`2
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`CBM2015-00017
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`U.S. Patent No. 8,061,598
`II. STATEMENT OF MATERIAL FACTS
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`Attorney Docket No.
`104677-5008-815
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`1.
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`On April 1, 2014, Petitioner filed two petitions for CBM review of the
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`’598 patent for claims 1, 2, 7, 13, 15, 26, and 31. See CBM2014-00108 and -00109, Pa-
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`per 2.
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`2.
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`On September 30, 2014 the Board instituted trial in both of those pro-
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`ceedings on claim 26 for grounds under 35 U.S.C. § 103, and consolidated the CBMs.
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`Id., Paper 8 at 23-24.
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`3.
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`The primary prior art for the grounds instituted in CBM2014-00108 is
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`Stefik.1 Id. at 23. The primary prior art reference for the grounds instituted in
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`CBM2014-00109 is Ginter (Ex. 1214). Id.
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`4.
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`The same patent, Petitioner, and Patent Owner are involved in the al-
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`ready-instituted CBMs (now consolidated as CBM2014-00108) and the new Petition
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`filed concurrently with this Motion, and it is Petitioner’s understanding that the same
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`counsel for each party from the already-instituted CBMs will represent Petitioner and
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`Patent Owner in the new Petition proceedings.
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`5.
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`The new Petition challenges on prior art grounds four claims—claims 1,
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`2, 15, and 31—that Petitioner had challenged in the earlier petitions, but that were not
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`1 As discussed in the Petition, “Stefik” refers to two documents that Petitioner sub-
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`mits should be considered a single reference—Stefik ’980 (Ex. 1213) and Stefik ‘235
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`(Ex. 1212), which incorporates Stefik ’980 by reference.
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`3
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`CBM2015-00017
`U.S. Patent No. 8,061,598
`instituted for trial. See id. at 25-26.
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`Attorney Docket No.
`104677-5008-815
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`6.
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`In particular, the new Petition asserts grounds based on 35 U.S.C. § 103
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`for claims 1, 2, 15, and 31 using various combinations of Stefik (cited by Petitioner
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`and instituted for trial in CBM2014-00108) with two new references, Ahmad (Ex.
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`1203) and Kopp (Ex. 1204).
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`7.
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`The new Petition also asserts a ground of invalidity based on 35 U.S.C.
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`§ 101 for claims 1, 2, 7, 15, and 31.
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`8.
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`Petitioner relies in its new Petition on a supporting declaration from the
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`same expert who submitted a declaration in the already-instituted CBMs.
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`III. DISCUSSION
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`The requested joinder will serve to secure the just, speedy, and inexpensive res-
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`olution of these proceedings. Under 35 U.S.C. § 325(c):
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`If more than 1 petition for a post-grant [or covered busi-
`ness method] 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 con-
`solidate such reviews into a single post-grant [or covered
`business method] review.
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`In addition, 37 C.F.R. § 42.222(b) provides that “[j]oinder may be requested by a pa-
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`tent owner or petitioner. Any request for joinder must be filed, as a motion under
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`§ 42.22, no later than one month after the institution date of any post-grant [or cov-
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`4
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`Attorney Docket No.
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`CBM2015-00017
`104677-5008-815
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`U.S. Patent No. 8,061,598
`ered business method] review for which joinder is requested.” This Motion is timely
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`under § 42.222(b) because Petitioner is filing it within one month after the September
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`30, 2014 institution date for the already-instituted CBMs.
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`The Board has further provided that a motion for joinder should: (1) set forth
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`the reasons why joinder is appropriate; (2) identify any new grounds of unpatentability
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`asserted in the petition; (3) explain what impact (if any) joinder would have on the tri-
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`al schedule of the existing proceeding; and (4) address specifically how briefing and
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`discovery may be simplified. See, e.g., Kyocera Corp. v. Softview LLC, IPR2013-00004,
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`Paper 15 at 4 (Apr. 24, 2013). Analysis of these factors here warrants the Board’s use
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`of its discretion to grant the requested joinder.
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`The existence of several similarities between the already-instituted CBMs (con-
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`solidated as CBM2014-00108) and the new Petition supports application of joinder.
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`The same patent, parties, and counsel are involved in both proceedings. The same
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`expert for Petitioner is involved in both proceedings—and, presumably, Patent Own-
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`er may use a common expert in both proceedings. Patent Owner has already re-
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`sponded to, and the Board has already analyzed for institution, two prior petitions
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`challenging every claim now at issue in the new Petition, which contain overlapping
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`subject matter with claims already instituted for trial. And Petitioner asserts one of
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`the same primary prior art references as in the original, already-instituted CBM trial.
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`As noted, the new Petition also adds one ground of invalidity based on § 101 for
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`claims 1, 2, 7, 15, and 31, the unpatentability of which was confirmed by the Supreme
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`5
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`Attorney Docket No.
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`CBM2015-00017
`104677-5008-815
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`U.S. Patent No. 8,061,598
`Court’s recent decision in Alice Corp. Pty, Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014),
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`which was decided after Petitioner’s original petitions challenging the ’598 Patent were
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`filed.
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`Petitioner believed, in submitting its original petitions, that it had made the re-
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`quired showing to invalidate, inter alia, claims 1, 2, 15, and 31. In its September 30 In-
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`stitution Decision, however, the Board construed the term “use rule” as “a rule speci-
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`fying a condition under which access to content is permitted,” and determined that
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`Petitioner had not shown it was more likely than not that it would prevail in demon-
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`strating that Stefik renders obvious “use rules” under the Board’s construction and
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`did not sufficiently explain why usage rights in Stefik fall within examples of “use sta-
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`tus data” in the specification of the ’598 Patent (e.g., past usage of stored data, that
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`stored data has not been accessed, number of times stored data has been accessed, du-
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`ration of access of stored data). In light of the Board’s Decision, Petitioner now iden-
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`tifies additional prior art—Ahmad and Kopp (see Exs. 1203 and 1204)—with explicit
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`disclosures of “use rules” as construed by the Board, and data that meets particular
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`examples of “use status data” provided by the specification of the ’598 Patent. (As
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`detailed in the Petition, Ahmad, for example, describes a software rental system that
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`monitors an elapsed time of use recorded by a timer or a number of uses recorded by
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`a counter and does not permit access to the rented software if a software rental license
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`has been exhausted (see, e.g., Ex. 1203 at 2:62-3:18), while Kopp discloses checking
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`recorded utilization data and denying access to a data record if a licensed extent of uti-
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`6
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`Attorney Docket No.
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`CBM2015-00017
`104677-5008-815
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`U.S. Patent No. 8,061,598
`lization has been exhausted (see, e.g., Ex. 1204 at 6:41-47).) Petitioner has also identi-
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`fied additional disclosure in the previously cited Stefik reference concerning these lim-
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`itations further confirming that it would have been obvious and routine to employ the
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`advantageous teachings of Ahmad and Kopp in implementing the system disclosed by
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`Stefik.
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`Given the significant overlap in subject matter and prior art, the requested
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`joinder offers the Board and the parties significant efficiencies by permitting the prior
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`art arguments to be addressed together, and by facilitating resolution of § 101 patent
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`eligibility of the same claims at the same time. Briefing, discovery and argument
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`would be simplified, as would the Board’s resolution of the invalidity issues presented
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`across these proceedings. With particular reference to discovery, Petitioner relies on
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`the same expert in its new Petition as in its original petitions, thus making it possible
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`to hold a single deposition of this witness for all proceedings, or at minimum—
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`depending on the final schedule—to enable an abbreviated follow-on deposition that
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`could be presented for the Board’s common consideration of all invalidity issues in all
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`proceedings. To the extent Patent Owner uses a common expert, the same will be
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`true for that witness. Given the significant overlap in challenged subject matter (with
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`elements common to the previously-instituted claims), prior art issues and subject
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`matter eligibility issues, common discovery and briefing will enable both the parties
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`and the Board to enjoy efficiencies in addressing these questions at once, rather than
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`in unnecessary and duplicative serial filings and arguments.
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`7
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`Attorney Docket No.
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`CBM2015-00017
`104677-5008-815
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`U.S. Patent No. 8,061,598
`Joinder here need not have any appreciable effect on the trial schedule of the
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`already-instituted CBMs. Indeed, Petitioner will seek to merge the Due Dates for
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`proceedings under the new Petition with the Due Dates for the already-instituted
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`CBMs to the extent practicable (and, as discussed in the October 29 Call, Petitioner
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`will confer with Patent Owner to determine whether agreement can be reached on a
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`proposed schedule to provide the Board and the parties with the efficiencies that can
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`be realized by addressing the invalidity questions concerning the ’598 on one time-
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`line).
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`To accommodate joinder (or, alternatively, coordination of schedules) with the
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`pending CBM2014-00108 trial, some compression of the general default schedule for
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`this new Petition will be necessary. Subject to the parties’ negotiation of a possible
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`joint proposal on schedule, Petitioner accordingly requests at the outset that the
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`Board provide a shortened period of six (6) weeks (until December 11, 2014) for a Pa-
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`tent Owner Preliminary Response to the new Petition. Petitioner contemplates that
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`its own periods for response will also be compressed. Given the significant overlap of
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`issues and evidence, however, Petitioner respectfully submits that neither party would
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`need to be unfairly prejudiced by the shortening of these periods from the general
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`timelines provided as a default for entirely new invalidity proceedings. In connection
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`with the Preliminary Response, for example, Patent Owner and its counsel are already
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`quite familiar with—and have already responded to two Petitions concerning—the
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`patent and claims at issue, as well as the primary prior art reference at issue here, and
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`8
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`Attorney Docket No.
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`CBM2015-00017
`104677-5008-815
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`U.S. Patent No. 8,061,598
`Patent Owner has already briefed the threshold question of whether the patent at is-
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`sue qualifies for a CBM review.
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`Finally, as stated above, should the Board deny joinder, Petitioner requests in
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`the alternative that the Board coordinate the schedules of each proceeding such that,
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`at minimum, the oral arguments (if requested) occur together. (Again, as discussed in
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`the October 29 Call, Petitioner will confer with Patent Owner to explore whether a
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`proposed schedule for such coordination can be agreed.) Good cause exists to grant
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`this alternative relief for the reasons enumerated above. In particular, given the
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`common issues already raised in each proceeding, a somewhat-accelerated schedule
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`will not cause undue prejudice, and holding a common argument on the same patent
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`and claims will not only increase the efficiencies for the parties, but will also enable to
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`Board to coordinate its determinations on these overlapping questions and its issu-
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`ance of Final Written Decisions for each proceeding.
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`IV. CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that the Board grant
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`joinder of trial, if instituted, on the new Petition filed concurrently with this Motion,
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`with the pending consolidated trial in CBM2014-00108, or, in the alternative, that the
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`Board coordinate the schedules in these proceedings to allow a common oral argu-
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`ment and Final Written Decisions. In addition, Petitioner respectfully requests a
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`shortened period of six (6) weeks (until December 11, 2014) for a Patent Owner Pre-
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`liminary Response.
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`9
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`CBM2015-00017
`U.S. Patent No. 8,061,598
`Respectfully submitted,
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`
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`By:/J. Steven Baughman/
`J. Steven Baughman (Lead Counsel)
`Megan Raymond
`ROPES & GRAY LLP
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`Attorney Docket No.
`104677-5008-815
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`October 30, 2014
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`Ching-Lee Fukuda (Backup Counsel)
`ROPES & GRAY LLP
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`Mailing address for all PTAB correspondence: ROPES & GRAY LLP,
`IPRM – Floor 43, Prudential Tower, 800 Boylston Street, Boston, MA 02199-3600
`Attorneys for Petitioner Apple Inc.
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`10
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`CBM2015-00017
`U.S. Patent No. 8,061,598
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`Attorney Docket No.
`104677-5008-815
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`CERTIFICATE OF SERVICE
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`
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`The undersigned hereby certifies that a copy of PETITIONER’S MO-
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`TION FOR JOINDER UNDER 35 U.S.C. § 325(c) AND 27 C.F.R. § 42.222(b)
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`AND REQUEST FOR SHORTENED RESPONSE TIME FOR PATENT OWN-
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`ER’S PRELIMINARY RESPONSE was served on October 30, 2014 by causing the
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`aforementioned document to be deposited in the United States Postal Service as Ex-
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`press Mail postage pre-paid in an envelope addressed to::
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`Michael R. Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
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`(Label No. EF 070 057 735 US)
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`Attorneys for Patent Owner Smartflash LLC
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`s/Megan Raymond
`Megan Raymond
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`
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`ROPES & GRAY LLP
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`
`
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