`Tel: 571-272-7822 CBM2015-00029, Paper 34; CBM2015-00031, Paper 34
` CBM2015-00032, Paper 34; CBM2015-00033, Paper 33
`
`Entered: December 16, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`SAMSUNG ELECTRONICS AMERICA, INC.,
`SAMSUNG ELECTRONICS CO., LTD., APPLE INC., and GOOGLE INC.
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Cases
` CBM2014-001901, CBM2015-000282, CBM2015-000293 (7,334,720 B2)
`CBM2015-000314, CBM2015-000325, CBM2015-000336 (8,336,772 B2)
`
`
`
`
`1 CBM2014-00190 (Samsung) instituted review of claims 13 and 14.
`Review of claims 13 and 14 in CBM2015-00118 (Apple) has been
`consolidated with this proceeding.
`2 CBM2015-00028 (Apple) instituted review of claims 1 and 2. Review of
`claim 1 in CBM2015-00125 (Google) has been consolidated with this
`proceeding.
`3 CBM2015-00029 (Apple) instituted review of claims 3 and 15. Review of
`claim 15 in CBM2015-00125 (Google) has been consolidated with this
`proceeding.
`4 CBM2015-00031 (Apple) instituted review of claims 1, 5, 8, and 10.
`Review of claims 5 and 10 in CBM2015-00059 (Samsung) has been
`consolidated with this case. Review of claims 1, 5, and 10 in CBM2015-
`00132 (Google) has been consolidated with this case.
`5 CBM2015-00032 (Apple) instituted review of claims 14, 19, and 22.
`Review of claim 14 in CBM2015-00059 (Samsung) has been consolidated
`with this case. Review of claims 14 and 22 in CBM2015-00132 (Google)
`has been consolidated with this case.
`
`
`
`CBM2014-00190, CBM2015-00028, CBM2015-00029 (7,334,720 B2)
`CBM2014-00031, CBM2015-00032, CBM2015-00033 (8,336,772 B2)
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, GREGG I. ANDERSON,
`and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`HEARING ORDER
`Request for Oral Argument
`
`
`
`Samsung Electronics America, Inc. and Samsung Electronics Co.,
`Ltd. ( “Samsung”) and Smartflash LLC (“Smartflash” or “Patent Owner”)
`have each requested an oral hearing for covered business method patent
`review proceeding CBM2014-00190, pursuant to 37 C.F.R. § 42.70. Papers
`35, 36.7
`Apple Inc. (“Apple”) and Smartflash have each requested an oral
`hearing for covered business method patent review proceedings CBM2015-
`00028 and CBM2015-00029, pursuant to 37 C.F.R. § 42.70. Papers 30, 32.8
`Apple Inc. (“Apple”) and Smartflash have each requested an oral
`hearing for covered business method patent review proceedings CBM2015-
`00031, CBM2015-0032, and CBM2015-00033, pursuant to 37 C.F.R.
`§ 42.70. Papers 28, 309.
`Upon consideration by the panel, the parties’ requests are granted.
`The hearing will be held in three sessions:
`
`
`6 CBM2015-00033 (Apple) instituted review of claims 25, 26, 30, and 32.
`Review of claims 26 and 32 in CBM2015-00059 (Samsung) has been
`consolidated with this case.
`7 Paper numbers refer to papers in CBM2014-00190.
`8 Paper numbers refer to papers in CBM2015-00028.
`9 Paper numbers refer to papers in CBM2015-00031.
`2
`
`
`
`CBM2014-00190, CBM2015-00028, CBM2015-00029 (7,334,720 B2)
`CBM2014-00031, CBM2015-00032, CBM2015-00033 (8,336,772 B2)
`
`1. The first session will cover the oral hearing for CBM2014-00190,
`and will commence at 1:30 PM Eastern Standard Time, on January
`6, 2016, on the ninth floor of Madison Building East, 600 Dulany
`Street, Alexandria, Virginia. Samsung and Smartflash will each
`have 15 minutes of total time to present arguments.
`2. The second session will cover the oral hearing for CBM2015-
`00028 and CBM2015-0029, and will commence at approximately
`2:00 AM East Eastern Standard Time, on January 6, 2016, on the
`ninth floor of Madison Building East, 600 Dulany Street,
`Alexandria, Virginia. Apple and Smartflash will each have 30
`minutes of total time to present arguments in both cases.
`3. The second session will cover the oral hearing for CBM2015-
`00031, CBM2015-00032, and CBM2015-0033, and will
`commence at approximately 3:00 PM East Eastern Standard Time,
`on January 6, 2016, on the ninth floor of Madison Building East,
`600 Dulany Street, Alexandria, Virginia. Apple and Smartflash
`will each have 45 minutes of total time to present arguments in all
`three cases.
`In each session, the parties are free to divide the time among the cases
`as they choose, and must make clear at all times for purposes of the
`transcript, the case(s) which they are discussing. Petitioner bears the
`ultimate burden of proof that Patent Owner’s claims at issue in this review
`are unpatentable and has the burden on its motion to exclude evidence.
`Petitioner will, therefore, begin by presenting its case regarding the
`challenged claims and grounds for which the Board instituted trial in the
`proceeding. Patent Owner will then respond to Petitioner’s arguments.
`
`3
`
`
`
`CBM2014-00190, CBM2015-00028, CBM2015-00029 (7,334,720 B2)
`CBM2014-00031, CBM2015-00032, CBM2015-00033 (8,336,772 B2)
`
`Petitioner may reserve time to reply to arguments presented by Patent
`Owner. There is no motion to amend pending in any of the subject
`proceedings.
`The hearing will be open to the public for in-person attendance that
`will be accommodated on a first-come, first-served basis. The Board will
`provide a court reporter for the hearing, and the reporter’s transcript will
`constitute the official record of the hearing.
`Under 37 C.F.R. § 42.70(b), demonstrative exhibits must be served
`five (5) business days before the hearing. The parties are directed to St. Jude
`Medical, Cardiology Division, Inc. v. The Board of Regents of the University
`of Michigan, Case IPR2013-00041 (PTAB Jan. 27, 2014) (Paper 65),
`regarding the appropriate content of demonstrative exhibits. The Board
`expects that the parties will meet and confer in good faith to resolve any
`objections to demonstrative exhibits, but if such objections cannot be
`resolved the parties may file any objections to demonstratives with the
`Board at least two business days before the hearing. The objections should
`identify with particularity which portions of the demonstrative exhibits are
`subject to objection, include a copy of the objected-to portions, and include a
`one-sentence statement of the reason for each objection. No argument or
`further explanation is permitted. The Board will consider any objections and
`schedule a conference call if deemed necessary. Otherwise, the Board will
`reserve ruling on the objections. Any objection to demonstrative exhibits
`that is not timely presented will be considered waived.
`The parties also shall provide the demonstrative exhibits to the Board
`at least two business days prior to the hearing by emailing them
`to Trials@uspto.gov. The parties shall not file any demonstrative exhibits in
`
`4
`
`
`
`CBM2014-00190, CBM2015-00028, CBM2015-00029 (7,334,720 B2)
`CBM2014-00031, CBM2015-00032, CBM2015-00033 (8,336,772 B2)
`
`this case without prior authorization from the Board. A hard copy of the
`demonstratives should be provided to the court reporter at the hearing.
`The parties also should note that at least one member of the panel will
`be attending the hearing electronically from a remote location, and that if a
`demonstrative is not made fully available or visible to the judge participating
`in the hearing remotely, that demonstrative will not be considered. If the
`parties have questions as to whether demonstrative exhibits would be
`sufficiently visible and available to all of the judges, the parties are invited
`to contact the Board at (571) 272-9797. The parties are also reminded that
`the presenter must identify clearly and specifically each demonstrative
`exhibit (e.g., by slide or screen number) referenced during the hearing to
`ensure the clarity and accuracy of the reporter’s transcript and the ability of
`the judge participating in the hearing remotely to closely follow the
`presenter’s arguments.
`The Board expects lead counsel for each party to be present in person
`at the oral hearing. However, lead or backup counsel may present the party’s
`argument. If either party anticipates that its lead counsel will not be
`attending the oral argument, the parties should initiate a joint telephone
`conference with the Board no later than two business days prior to the oral
`hearing to discuss the matter.
`Questions regarding specific audio-visual equipment should be
`directed to the Board at (571) 272-9797. Requests for audio-visual
`equipment are to be made five (5) days in advance of the hearing date. The
`request is to be sent to Trials@uspto.gov. If the request is not received
`timely, the equipment may not be available on the day of the hearing.
`
`5
`
`
`
`CBM2014-00190, CBM2015-00028, CBM2015-00029 (7,334,720 B2)
`CBM2014-00031, CBM2015-00032, CBM2015-00033 (8,336,772 B2)
`
`If any party has questions or concerns about the format of the hearing
`that it would like to raise with the panel, including the identification of the
`claims being challenged, that party should request a conference no later than
`Tuesday, December 29, 2015.
`
`6
`
`
`
`CBM2014-00192, CBM2015-00016 (Patent 8,033,458)
`CBM2014-00193, CBM2015-00017 (Patent 8,061,598)
`CBM2014-00194, CBM2014-00199, CBM2015-00015 (Patent 8,118,221)
`CBM2015-00018 (Patent 7,942,317)
`PETITIONER APPLE:
`
`J. Steven Baughman
`Ching-Lee Fukuda
`Megan Raymond
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`ching-lee.fukuda@ropesgray.com
`Megan.raymond@ropesgray.com
`
`PETITIONER GOOGLE:
`
`Raymond Nimrod
`raynimrod@quinnemauel.com
`Andrew Holmes
`QE-SF-PTAB-Service@quinnemanuel.com
`
`
`PETITIONER SAMSUNG:
`
`Walter Renner
`axf@fr.com
`Thomas Rozylowicz
`CBM39843-0003CP1@fr.com
`
`PATENT OWNER:
`
`Michael R. Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`mcasey@dbjg.com
`jsd@dbjg.com
`
`
`7