Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 51, CBM2015-00015
`Paper 39, CBM2015-00018
`Entered: December 8, 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)
` CBM2015-00018 (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
`Denying Rehearing Request
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`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 51, CBM2015-00015
`Paper 39, CBM2015-00018
`Entered: December 8, 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)
` CBM2015-00018 (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
`Denying Rehearing Request
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`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)
`CBM2015-00018 (Patent 7,942,317 B2)
`
`
`I. INTRODUCTION
`
`Patent Owner, Smartflash LLC (“Smartflash”), requests rehearing
`
`under 37 C.F.R. § 42.71(d) of the Board’s November 5, 2015 Order (“Dec.,”
`
`Paper 372). Paper 38 (“Mot.”). Smartflash also requests authorization to file
`
`a motion to terminate CBM2015-00015 and CBM2015-00018. Id. at 1. In
`
`the alternative, Smartflash requests that it be granted an oral hearing in
`
`CBM2015-00015 and CBM2015-00018. Id.
`
`In our Order, we determined that 35 U.S.C. § 325(e)(1) is applicable
`
`to Apple with respect to claim 1 of U.S. Patent No. 8,118,221 (“the ’221
`
`patent”) in CBM2015-00015 because Apple was the Petitioner in
`
`CBM2014-00102, which resulted in a final written decision with respect to
`
`claim 1 of the ’221 patent. Dec. 3. We likewise determined that § 325(e)(1)
`
`is applicable to Apple with respect to claim 18 of U.S. Patent No. 7,942,317
`
`(“the ’317 patent”) in CBM2015-00018 because Apple was the Petitioner in
`
`CBM2014-00112, which resulted in a final written decision with respect to
`
`claim 18 of the ’317 patent. Id. at 7. Because we determined that Apple
`
`“reasonably could have raised” a 35 U.S.C. § 101 challenge to these claims
`
`in its CBM2014-00102 and CBM2014-00112 petitions and because claims 1
`
`and 18 were the only claims challenged in CBM2015-00015 and CBM2015-
`
`00018, respectively, we dismissed Apple as a Petitioner from CBM2015-
`
`00015 and CBM2015-00018. Id. at 4–5, 7. We further stated that because
`
`Apple is the only Petitioner in these cases, we would not hear any argument
`
`
`2 References are to paper numbers in CBM2015-00018, unless otherwise
`specified.
`
`2
`
`
`
`CBM2015-00015 (Patent 8,118,221 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
`
`with respect to these cases at the November 9, 2015, hearing.3 Id. at 5 n.3,
`
`7–8 n.6. Lastly, we denied Smartflash authorization to file a motion to
`
`terminate CBM2015-00015, noting that § 325(e)(1) does not proscribe
`
`actions that we may take. Id. at 5–64 (citing Progressive Cas. Ins. Co. v.
`
`Liberty Mut. Ins. Co., No. 2014-1466, 2015 WL 5004949, at *2 (Fed. Cir.
`
`Aug. 24, 2015) (nonprecedential).
`
`
`
`II. ANAYLSIS
`
`The applicable standard for a request for rehearing is set forth in
`
`37 C.F.R. § 42.71(d), which provides in relevant part:
`
`A party dissatisfied with a decision may file a request for
`rehearing without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. The request must specifically
`identify
`all matters
`the party believes
`the Board
`misapprehended or overlooked, and the place where each
`matter was previously addressed in a motion, opposition, or a
`reply.
`
`We deny Smartflash’s request for rehearing of our Order and its
`
`request for authorization to file a motion to terminate these cases.
`
`However, we grant Smartflash’s request for a hearing in CBM2015-
`
`00015 and CBM2015-00018, as discussed below.
`
`
`3 Notwithstanding our Order, we gave Smartflash the opportunity to provide
`argument in CBM2015-00015 and CBM2015-00018 at the November 9,
`2015 hearing. Smartflash, however, declined to make argument with respect
`to the two claims in these two cases. Mot. 13.
`4 As Smartflash notes, we requested briefing in CBM2015-00015 on whether
`Apple was estopped, but did not request such briefing in CBM2015-00018.
`Mot. 2.
`
`3
`
`
`
`CBM2015-00015 (Patent 8,118,221 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
`
`
`Smartflash first argues that we misapprehend the decision in
`
`Progressive because that case was limited to the facts presented in
`
`that case. According to Smartflash, the Federal Circuit’s holding that
`
`Ҥ 325(e)(1) by its terms does not prohibit the Board from reaching
`
`decisions” is limited to Progressive’s argument in that case for the
`
`“instantaneous application” of § 325(e)(1) to bar the Board from
`
`entering a second decision posted to its electronic docketing system
`
`just an hour after, but the same day as, it posted a first decision on the
`
`same patent involving overlapping claims. Mot. 7; see Progressive,
`
`2015 WL 5004949, at *1–2. We disagree. The Federal Circuit
`
`expressly stated that “[t]here are two problems with Progressive’s
`
`contention.” 2015 WL 5004949, at *2. With respect to the first
`
`“problem” the Federal Circuit stated:
`
`First: § 325(e)(1) by its terms does not prohibit the Board from
`reaching decisions. It limits only certain (requesting or
`maintaining) actions by a petitioner. Nothing in the provision,
`or chapter 32 more generally, equates that limitation on a
`petitioner with Board authority to enter a decision. Cf. § 327(a)
`(Board may enter decision even after petitioner settles and
`drops out of the proceeding).
`
`Id. (emphasis added). We determine that this reasoning is persuasive
`
`to guide our analysis of the facts presented here.
`
`Smartflash next argues that our Order is inconsistent with the
`
`Board’s decision in International Business Machines Corp. v.
`
`Intellectual Ventures II, LLC, Case IPR2014-01465 (PTAB Nov. 6,
`
`2015) (Paper 32) (“IBM case”). Again, we disagree. The decision in
`
`the IBM case, after determining that the Petitioner was estopped,
`
`acknowledged that Ҥ 315(e)(1) does not mandate that the Board
`
`4
`
`
`
`CBM2015-00015 (Patent 8,118,221 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
`
`reach a final written decision.” Id. at 9 (emphasis added). After
`
`consideration of the “totality of the circumstances,” the decision stated
`
`that it was appropriate to terminate the proceeding at issue. Id.
`
`Smartflash’s request for leave to file a Motion to Terminate is denied
`
`for the reasons previously set forth in our Estoppel Order. See Paper 37, 5–
`
`6.
`
`Lastly, Smartflash requests oral hearing in CBM2015-00015
`
`and CBM2015-00018 should we deny its requests for authorization to
`
`file motions to terminate. Mot. 13–14. We grant Smartflash’s
`
`requests for oral hearing in these two cases. The oral hearing will be
`
`conducted via teleconference. The Board will provide a court reporter
`
`on the call. The oral hearing will be limited to fifteen minutes total
`
`for both cases given that only one claim is at issue in each case.
`
`Because Apple Inc. was dismissed from these cases as Petitioner,
`
`Apple will not be permitted to participate in the hearing. By
`
`December 11, 2015, Smartflash shall provide at least three different
`
`dates and times between December 14–16 when it is available for the
`
`hearing.
`
`
`
`It is:
`
`ORDERED that Smartflash’s request for rehearing of our Order is
`
`denied;
`
`FURTHER ORDERED that Smartflash’s request for authorization to
`
`file motions to terminate in CBM2015-00015 and CBM2015-00018 is
`
`denied;
`
`5
`
`
`
`CBM2015-00015 (Patent 8,118,221 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
`
`
`FURTHER ORDERED that Smartflash’s request for an oral hearing
`
`in CBM2015-00015 and CBM2015-00018 is granted, as provided above;
`
`and
`
`FURTHER ORDERED that by December 11, 2015, Smartflash shall
`
`provide dates and times between December 14–16 when it is available for an
`
`oral hearing.
`
`
`
`6
`
`
`
`CBM2015-00015 (Patent 8,118,221 B2)
`CBM2015-00018 (Patent 7,942,317 B2)
`
`PETIONER (Dismissed):
`
`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
`
`7
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