Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 28, CBM2015-00015
`Paper 28, CBM2015-00016
`Paper 27, CBM2015-00017
`Paper 20, CBM2015-00018
`Entered: May 13, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`
`
`
`
`
`
`CBM2015-00015 (Patent 8,118,221 B2)
`CBM2015-00016 (Patent 8,033,458 B2)
`CBM2015-00017 (Patent 8,061,598 B2)
` CBM2015-00018 (Patent 7,942,317 B2) 1
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`
`
`ORDER
`
`
`
`
`1 This order addresses issues that are the same in all identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties, however, are not authorized to use this style heading in subsequent
`papers, except the filing of the transcript for this teleconference.
`
`
`Tel: 571-272-7822
`
`
`
`
`
`
`Paper 28, CBM2015-00015
`Paper 28, CBM2015-00016
`Paper 27, CBM2015-00017
`Paper 20, CBM2015-00018
`Entered: May 13, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`
`
`
`
`
`
`CBM2015-00015 (Patent 8,118,221 B2)
`CBM2015-00016 (Patent 8,033,458 B2)
`CBM2015-00017 (Patent 8,061,598 B2)
` CBM2015-00018 (Patent 7,942,317 B2) 1
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`
`
`ORDER
`
`
`
`
`1 This order addresses issues that are the same in all identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties, however, are not authorized to use this style heading in subsequent
`papers, except the filing of the transcript for this teleconference.
`
`
`
`CBM2015-00015 (Patent 8,118,221 B2)
`CBM2015-00016 (Patent 8,033,458 B2)
`CBM2015-00017 (Patent 8,061,598 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
`
`
`An initial teleconference was held in these cases on May 11, 2015,
`
`among respective counsel for Petitioner Apple, Inc. (“Apple”), Patent Owner
`
`Smartflash LLC (“Smartflash”), and Judges Elluru, Bisk, Plenzler, and
`
`Clements. A court reporter transcribed the teleconference at the request of
`
`Smartflash. Apple and Smartflash submitted lists of proposed motions.
`
`Papers 26 and 27.2
`
`As noted, Apple already has authorization to file motions for pro hac
`
`vice admission. Paper 7.
`
` Patent Owner requested authorization to file a motion for “routine
`
`discovery” under 37 C.F.R. § 42.51(b)(1)(iii) to obtain “at least one
`
`document from Petitioner related to any allegations by Petitioner (1) that any
`
`of Petitioner’s products do not infringe any of the challenged claims and
`
`(2) that acceptable non-infringing alternatives exist to the challenge claims.”
`
`Paper 27. Smartflash argued that such documents are inconsistent with
`
`Apple’s argument that the claims provide relative preemption sufficient to
`
`invoke a finding of non-statutory subject matter under 35 U.S.C. § 101. Id.
`
`We decided that Apple’s alleged evidence of non-infringement and non-
`
`infringing alternatives in the district court is not inconsistent with Apple’s
`
`assertion in these cases that the challenged claims are unpatentable under
`
`35 U.S.C. § 101.
`
`As Apple stated, the question of whether the challenged claims
`
`preempt a field under the § 101 analysis is a question of “relative”
`
`preemption. Limiting an abstract idea to a particular technological
`
`
`2 Paper numbers refer to papers in CBM2015-00015.
`
`2
`
`
`
`CBM2015-00015 (Patent 8,118,221 B2)
`CBM2015-00016 (Patent 8,033,458 B2)
`CBM2015-00017 (Patent 8,061,598 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
`
`environment, specific field of use, or adding token post-solution activity
`
`does not make an abstract concept patentable. See Content Extraction and
`
`Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1348
`
`(Fed. Cir. 2014) (holding that using a scanner and a computer at most limits
`
`the abstract idea of recognizing and storing information from hard copy
`
`documents to a particular technological environment and is insufficient to
`
`save a claim from unpatentability under § 101); Parker v. Flook, 437 U.S.
`
`584, 590 (1978) (“A competent draftsman could attach some form of post-
`
`solution activity to almost any mathematical formula . . . .”), 593 (allowing
`
`determination of patent-eligibility to depend on draftsman’s art would not
`
`serve the principles underlying the prohibition against patents for abstract
`
`ideas). Smartflash did not point us to any authority that an accused infringer
`
`who pleads in the alternative that the challenged claims are unpatentable
`
`under § 101, a question of law, is taking an inconsistent position with its
`
`non-infringement position. In addition, to the extent that Apple’s assertion
`
`of non-infringement in district court is inconsistent with its assertion in these
`
`cases that the challenged claims are unpatentable under § 101, we determine
`
`that Smartflash is in possession of the relevant evidence of the alleged
`
`inconsistency. Specifically, Smartflash has the evidence that Apple took
`
`such allegedly inconsistent positions. We are not persuaded that the details
`
`of Apple’s non-infringement positions shed light on the § 101 issue.
`
`The parties next informed us that they reached an agreement as to
`
`extending Due Dates 1 and 2. The parties shall file a stipulation indicating
`
`the new dates for Due Dates 1 and 2.
`
`3
`
`
`
`CBM2015-00015 (Patent 8,118,221 B2)
`CBM2015-00016 (Patent 8,033,458 B2)
`CBM2015-00017 (Patent 8,061,598 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
`
`
`Lastly, the parties agreed to take a single deposition of any declarant
`
`in all related cases such that a single deposition transcript can be used in all
`
`related proceedings, but filed separately in each proceeding. We are
`
`amenable to that agreement.
`
`
`
`It is:
`
`ORDERED that Smartflash shall file the transcript of the present
`
`teleconference in each of the cases identified above;
`
`FURTHER ORDERED that Smartflash is not authorized to file a
`
`motion to compel routine discovery; and
`
`FURHTER ORDERED that the parties shall file a stipulation in each
`
`of these cases indicating the new dates for Due Dates 1 and 2.
`
`
`
`4
`
`
`
`CBM2015-00015 (Patent 8,118,221 B2)
`CBM2015-00016 (Patent 8,033,458 B2)
`CBM2015-00017 (Patent 8,061,598 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
`
`PETIONER:
`
`J. Steven Baughman
`Ching-Lee Fukuda
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`ching-lee.fukuda@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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