Trials@uspto.gov
`Tel: 571-272-7822
`
`CBM2015-00015, Paper 49
`CBM2015-00016, Paper 50
`CBM2015-00018, Paper 37
`CBM2014-00194, Paper 46
`Entered: November 4, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`APPLE INC.,
`Petitioner,
`v.
`SMARTFLASH LLC,
`Patent Owner.
`
`
`
`CBM2015-00015 and CBM2014-001941 (Patent 8,118,221 B2)
`CBM2015-00016 (Patent 8,033,458 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`
`
`1 Although Samsung filed CBM2014-00194, Apple filed CBM2015-00117,
`which was joined to this proceeding. See CBM2014-00194, Paper 32.
`
`

`
`CBM2015-00015 and CBM2014-00194 (Patent 8,118,221 B2)
`CBM2015-00016 (Patent 8,033,458 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
`
`I.
`
`INTRODUCTION
`
`On October 9, 2015, we issued an order in CBM2015-00015 and
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`CM2015-00016 requesting briefing by the parties regarding whether Apple
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`is estopped from arguing the unpatentability of claim 1 of the ’221 patent
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`and claim 1 of the ’458 patent pursuant to 35 U.S.C. § 101 at the
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`November 9th hearing. Paper 42.2 Apple (Paper 44) and Smartflash
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`(Paper 45) filed the requested briefing.
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`The patentability of these claims has been decided in previously
`
`issued final written decisions. On September 25, 2015, we issued a final
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`written decision in CBM2014-00102, brought by Apple, concluding that
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`claims 1, 2, and 11–14 of the ’221 patent are unpatentable pursuant to
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`35 U.S.C. § 103. CBM2014-00102, Paper 52, 43. On September 25, 2015,
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`we also issued a final written decision in CBM2014-00106, brought by
`
`Apple, concluding that claim 1 of the ’458 patent is unpatentable pursuant to
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`35 U.S.C. § 103. CBM2014-00106, Paper 52, 31.
`
`II. ANALYSIS
`
`35 U.S.C. § 325(e)(1) mandates that
`
`[t]he petitioner in a post-grant review of a claim in a patent
`under this chapter that results in a final written decision under
`section 328(a) or the real party in interest or privy of the
`petitioner, may not request or maintain a proceeding before the
`Office with respect to that claim on any ground that the
`petitioner raised or reasonably could have raised during that
`post-grant review.
`
`
`2 Citations are to CBM2015-00015 unless otherwise noted.
`
`2
`
`

`
`CBM2015-00015 and CBM2014-00194 (Patent 8,118,221 B2)
`CBM2015-00016 (Patent 8,033,458 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
`
`
`A.
`
`CBM2015-00015 and CBM2015-00016
`
`Apple contends that it should not be estopped from arguing the
`
`patentability of claim 1 of the ’221 patent and claim 1 of the ’458 patent
`
`pursuant to § 101 because “it could not ‘reasonably’ have raised its Alice-
`
`based § 101 ground at the time of the earlier petition, nor is Apple
`
`‘maintain[ing]’ this proceeding by merely participating in oral argument,
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`given that the evidentiary record is closed.” Paper 44, 1. Smartflash argues
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`that “Apple is estopped from arguing claim 1 of the ’221 Patent and claim 1
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`of the ’458 Patent at the November 9, 2015 hearing.” Paper 45, 1.
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`Specifically, Smartflash contends that “Apple may not maintain its
`
`CBM2015-00015 and -00016 proceedings with respect to claim 1 of the
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`‘221 Patent and claim 1 of the ‘458 Patent because § 101 eligibility is a
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`ground that Apple reasonably could have raised during the CBM2014-00102
`
`and -00106 reviews.” Id.
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`We determine that § 325(e)(1) is applicable to Apple with respect to
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`claim 1 of the ’221 patent and claim 1 of the ’458 patent. Apple was the
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`petitioner in CBM2014-00102, which resulted in a final written decision
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`with respect to claim 1 of the ’221 patent and in CBM2014-00106, which
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`resulted in a final written decision with respect to claim 1 of the ’458 patent.
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`CBM2014-00102, Paper 52, 43; CBM2014-00106, Paper 52, 31. Thus,
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`pursuant to § 325(e)(1), Apple cannot “request or maintain” a proceeding
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`before the Office with respect to these claims “on any ground” that Apple
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`“raised or reasonably could have raised” during CBM2014-00102 and
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`CBM2014-00106.
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`3
`
`

`
`CBM2015-00015 and CBM2014-00194 (Patent 8,118,221 B2)
`CBM2015-00016 (Patent 8,033,458 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
`
`
`Apple contends that it “could not ‘reasonably’ have raised” in its
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`earlier petitions “the Alice-based § 101 grounds presented in the later
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`petitions “because seminal case law relied on did not yet exist.” Paper 44 at
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`2 (citing Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014)).
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`According to Apple, CBM proceedings have treated § 101 differently “pre-
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`and post-Alice.” Id. at 3. We are not persuaded by Apple’s argument.
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`Section 325(e)(1) estops Apple from filing or maintaining a
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`proceeding before the Office with respect to the claims at issue on “any
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`ground that [Apple] raised or reasonably could have raised.” (Emphasis
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`added). This statutory provision does not make exceptions for intervening
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`case law that merely clarifies jurisprudence. See Paper 45, 5. Moreover,
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`although Alice was not decided, the Supreme Court had already decided
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`Bilski and Mayo on which Alice relied, and a number of Federal Circuit
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`cases had already issued finding computer-based method claims invalid
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`under § 101. See, e.g., Accenture Global Servs. GmbH v. Guidewire
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`Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013); Bancorp Servs, LLC v. Sun
`
`Life Asur. Co., 687 F.3d 1266 (Fed. Cir. 2012); Dealertrack, Inc. v. Huber,
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`674 F.3d 1315 (Fed. Cir. 2012); Cybersource Corp. v. Retail Decisions, Inc.,
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`654 F.3d 1366 (Fed. Cir. 2011). Thus, we determine Apple “reasonably
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`could have raised” a § 101 challenge to claim 1 of the ’221 patent and claim
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`1 of the ’458 patent. Thus, § 325(e)(1) is applicable to these claims.
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`Apple further argues that “maintain a proceeding” “connotes active
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`participation in the proceeding while the evidentiary record remains open”
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`and it cannot “maintain” a proceeding after the evidentiary record has
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`closed. Id. at 4. Thus, Apple concludes that it would not be “maintain[ing]”
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`4
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`

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`CBM2015-00015 and CBM2014-00194 (Patent 8,118,221 B2)
`CBM2015-00016 (Patent 8,033,458 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
`
`this proceeding by “merely participating in oral argument.” Id. at 1. We
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`disagree. We determine that “maintain a proceeding” includes presenting
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`argument at the hearing with respect to the claims at issue. Thus, Apple may
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`not present argument with respect to the patentability of claim 1 of the ’2213
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`patent and claim 1 of the ’458 patent at the November 9 hearing. We further
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`dismiss Apple as a Petitioner from CBM2015-00015 and from CBM2015-
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`00016 with respect to claim 1 of the ’458 patent.4
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`Lastly, Smartflash requests “leave to file a Motion to Terminate
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`CBM2015-00015 and -00016 with respect to claim 1 in light of this
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`estoppel.” Paper 45, 2. We deny Smartflash authorization to file a motion
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`to terminate these cases with respect to these claims.
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`Section 325(e)(1) speaks to actions that may not be undertaken by
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`Petitioner (or its real party in interest or privy) – “[t]he Petitioner . . . may
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`not request or maintain a proceeding before the Office” (emphasis added).
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`The statutory provision, however, does not proscribe actions that we may
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`take. See Progressive Cas. Ins. Co. v. Liberty Mut. Ins. Co., No. 2014-1466,
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`2015 WL 5004949, at *2 (Fed. Cir. Aug. 24, 2015)(nonprecedential))
`
`
`3 Because claim 1 of the ’221 patent is the only claim challenged in
`CBM2015-00015 and Apple is the only petitioner in CBM2015-00015, we
`will not hear any argument with respect to CBM2015-00015 at the hearing
`on November 9, 2015.
`4 Apple requests that if we determine that estoppel prevents it from
`participating in the oral argument, we should “terminate” Apple from the
`proceeding “to make clear that the § 325(e)(2) litigation estoppel provision
`would not apply from a decision in the current proceeding.” Paper 44, 6 n.2
`(emphasis added). Given that we dismiss Apple from CBM2015-00015 and
`CBM2015-00016, Apple will no longer be a petitioner in these cases with
`respect to claim 1 of the ’221 patent and claim 1 of the ’458 patent.
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`5
`
`

`
`CBM2015-00015 and CBM2014-00194 (Patent 8,118,221 B2)
`CBM2015-00016 (Patent 8,033,458 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
`
`(stating that 35 U.S.C. § 325(e)(1) “by its terms does not prohibit the Board
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`from reaching decisions. It limits only certain (requesting or maintaining)
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`actions by a petitioner.”). Moreover, these proceedings are in the late stages
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`of Covered Business Method patent reviews with a fully developed record.
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`See BlackBerry Corp. v. MobileMedia Ideas, LLC, Case IPR2013-00016,
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`(PTAB Dec. 11, 2013) (Paper 31) and InterThinx Inc.v. CoreLogic
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`Solutions, LLC¸ Case CBM2012-00007 (PTAB Nov. 12, 2013) (Paper 47)
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`(issuing final written decisions in cases in cases in which no petitioner
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`remained as a result of settlement under 35 U.S.C. § 317). There is a public
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`interest in resolving the issues raised by these challenges because the record
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`is fully developed. Moreover, we are making determinations in related cases
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`involving similar issues and argument. Administrative resources will be
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`conserved by resolving all the similar issues at once.
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`Thus, we deny Smartflash authorization to file motions to terminate
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`our reviews in CBM2015-00015 and CBM2015-00016 with respect to
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`claim 1.
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`B.
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`CBM2014-00194 and CBM2015-00018
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`In CBM2015-00117, brought by Apple, we instituted review of
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`claims 2, 11, and 32 of the ’221 patent as unpatentable under 35 U.S.C.
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`§ 101, and consolidated this proceeding with CBM2014-00194, brought by
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`Samsung, which also challenges claims of the ’221 patent. CBM2015-
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`00117, Paper 11, 6. We further terminated CBM2015-00117. Id. In
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`CBM2015-00018, brought by Apple, we instituted review of claim 18 of
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`U.S. Patent No. 7,942,317 (“the ’317 patent) as unpatentable under
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`35 U.S.C. § 101. CBM2015-00018, Paper 15, 13.
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`6
`
`

`
`CBM2015-00015 and CBM2014-00194 (Patent 8,118,221 B2)
`CBM2015-00016 (Patent 8,033,458 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
`
`
`The patentability of claims 2 and 11 of the ’221 patent has been
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`decided in a previously issued final written decision. As noted above, on
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`September 25, 2015, we issued a final written decision in CBM2014-00102,
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`brought by Apple, concluding that claims 1, 2, and 11–14 of the ’221 patent
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`are unpatentable pursuant to 35 U.S.C. § 103. CBM2014-00102, Paper 52,
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`43. The patentability of claim 18 of the ’317 patent has been decided in a
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`previously issued final written decision. On September 25, 2015, we issued
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`a final written decision in CBM2014-00112, brought by Apple, concluding
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`that claims 1, 6–8, 12, 13, 16, and 18 of the ’317 patent are unpatentable
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`pursuant to 35 U.S.C. § 103. Paper 48, 29.
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`Thus, Apple was the petitioner in CBM2014-00102 that resulted in a
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`final written decision with respect to two of the three claims—claims 2 and
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`11 of the ’221 patent—challenged in CBM2014-00194. Apple also was the
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`petitioner in CBM2014-00112 that resulted in a final written decision with
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`respect to the claim—claim 18—challenged in CBM2015-00018. The
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`analysis provided above with respect to CBM2015-00015 and CBM2015-
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`00016 is applicable to these claims as well. Thus, we dismiss Apple as a
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`Petitioner from CBM2014-00194 (with which CBM2015-00117 was
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`consolidated) with respect to claims 2 and 11 of the ’221 patent.5 Apple
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`may not present argument with respect to the patentability of claim 18 of the
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`’3176 patent and we dismiss Apple as a Petitioner from CBM2015-00018.
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`5 In our Order granting requests for oral hearing (CBM2014-00194,
`Paper 40, 2–3), we ordered Samsung to argue on behalf of Petitioners in
`CBM2014-000194.
`6 Because claim 18 of the ’317 patent is the only claim challenged in
`CBM2015-00018 and Apple is the only petitioner in CBM2015-00018, we
`
`7
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`

`
`CBM2015-00015 and CBM2014-00194 (Patent 8,118,221 B2)
`CBM2015-00016 (Patent 8,033,458 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
`
`
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`ORDER
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`Accordingly, it is:
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`ORDERED that Apple may not present argument with respect to the
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`patentability of claim 1 of the ’221 patent or claim 1 of the ’458 patent at the
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`November 9 hearing;
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`FURTHER ORDERED that Apple is dismissed as a Petitioner from
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`CBM2015-00015;
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`FURTHER ORDERED that Apple is dismissed as a Petitioner from
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`CBM2015-00016 with respect to claim 1 of the ’458 patent;
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`FURTHER ORDERED that Apple is dismissed as a Petitioner from
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`CBM2014-00194 with respect to claims 2 and 11 of the ’221 patent;
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`FURTHER ORDERED that Apple is dismissed as a Petitioner from
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`CBM2015-00018; and
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`FURTHER ORDERED that Smartflash is denied authorization to file
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`motions to terminate in CBM2015-00015 and CBM2015-00016 with respect
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`to the challenge to claim 1 in each of these cases.
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`
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`will not hear any argument with respect to CBM2015-00018 at the hearing
`on November 9, 2015.
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`8
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`

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`CBM2015-00015 and CBM2014-00194 (Patent 8,118,221 B2)
`CBM2015-00016 (Patent 8,033,458 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
`
`PETITIONER:
`
`J. Steven Baughman
`Ching-Lee Fukuda
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`ching-lee.fukuda@ropesgray.com
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`
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`PATENT OWNER:
`
`Michael R. Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`mcasey@dbjg.com
`jsd@dbjg.com
`
`9