Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`
`
`Paper 22, CBM2015-00028
`Paper 22, CBM2015-00029
` Paper 22, CBM2015-00031
`Paper 22, CBM2015-00032
`Paper 22, CBM2015-00033
`Entered: July 24, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`CBM2015-00028 (Patent 7,334,720 B2)
`CBM2015-00029 (Patent 7,334,720 B2)
`CBM2015-00031 (Patent 8,336,772 B2)
`CBM2015-00032 (Patent 8,336,772 B2)
`CBM2015-00033 (Patent 8,336,772 B2)1
`
`
`
`
`
`
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`GREGG I. ANDERSON, 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 for the filing of the transcript of this teleconference.
`
`
`
`

`
`CBM2015-00028 (Patent 7,334,720 B2)
`CBM2015-00029 (Patent 7,334,720 B2)
`CBM2015-00031 (Patent 8,336,772 B2)
`CBM2015-00032 (Patent 8,336,772 B2)
`CBM2015-00033 (Patent 8,336,772 B2)
`
`
`A teleconference was held in these cases on July 21, 2015, among
`
`respective counsel for Petitioner Apple Inc. (“Apple”), Patent Owner
`
`Smartflash LLC (“Smartflash”), and Judges Bisk, Elluru, Anderson, and
`
`Clements. A court reporter transcribed the teleconference at the request of
`
`Smartflash.
`
`Patent Owner renewed (see Paper 182) its request for authorization to
`
`file a motion for “routine discovery” under 37 C.F.R. § 42.51(b)(1)(iii) to
`
`“require Apple to produce under seal any litigation documents setting forth
`
`Non-Infringing Alternatives and setting forth Apple’s Non-Infringement
`
`positions, or, in the alternative redacted copies of the documents showing the
`
`claims that are alleged to have alternatives and/or alleged to not be infringed
`
`with an identification of the elements of the claims that have alternatives
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`and/or are not infringed, along with the names of the technologies that are
`
`alleged to be alternatives and any publicly available information on those
`
`technologies.” During our previous teleconference, we encouraged the
`
`parities to meet and confer to determine whether they could reach a
`
`stipulation that would resolve this issue. Id. The parties related that they
`
`were unable to reach agreement on a stipulation.
`
`Smartflash contends that it is requesting the discovery because Apple
`
`was obligated to produce it as information “inconsistent” with a position
`
`taken in these proceedings3 because it relates to whether the challenged
`
`
`2 Paper numbers refer to papers in CBM2014-00028.
`3 37 C.F.R. § 42.51(b)(1)(iii) (“Unless previously served, a party must serve
`relevant information that is inconsistent with a position advanced by the
`
`2
`
`

`
`CBM2015-00028 (Patent 7,334,720 B2)
`CBM2015-00029 (Patent 7,334,720 B2)
`CBM2015-00031 (Patent 8,336,772 B2)
`CBM2015-00032 (Patent 8,336,772 B2)
`CBM2015-00033 (Patent 8,336,772 B2)
`
`claims preempt all uses of the abstract idea itself. As we have stated before,
`
`and related again during the present teleconference, the question of whether
`
`the challenged claims preempt a field is a question of “relative” preemption.
`
`Smartflash did not point us to any authority that an accused infringer who
`
`pleads in the alternative that the challenged claims are unpatentable under
`
`35 U.S.C. § 101, a question of law, is taking an inconsistent position with its
`
`non-infringement position. We, thus, decided that Apple’s assertions in the
`
`district court regarding alleged non-infringing alternatives is not inconsistent
`
`with Apple’s assertions in these cases that the challenged claims are
`
`unpatentable under § 101. And to the extent that Apple’s assertion of non-
`
`infringement in district court is inconsistent with its assertion in these
`
`proceedings that the challenged claims are unpatentable under § 101, we
`
`determine that Smartflash is in possession of the “relevant information” of
`
`the alleged inconsistency. Specifically, Smartflash has the evidence that
`
`Apple took such allegedly inconsistent positions.
`
`Given that Smartflash has not persuaded us that Apple is obligated to
`
`produce the requested discovery under Rule 42.51(b)(1)(iii), we interpreted
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`Smartflash’s request for the requested discovery relating to Apple’s position
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`on non-infringing alternatives as a request for “additional discovery,” to
`
`which we apply the Garmin factors. Garmin Int'l, Inc. v. Cuozzo Speed
`
`Techs, Case IPR2012-00001 (PTAB March 5, 2013) Paper 26 at 6–7
`
`(identifying factors to be considered in determining whether additional
`
`
`party during the proceeding concurrent with the filing of the documents or
`things that contains the inconsistency.”).
`
`3
`
`

`
`CBM2015-00028 (Patent 7,334,720 B2)
`CBM2015-00029 (Patent 7,334,720 B2)
`CBM2015-00031 (Patent 8,336,772 B2)
`CBM2015-00032 (Patent 8,336,772 B2)
`CBM2015-00033 (Patent 8,336,772 B2)
`
`discovery is warranted). Applying the Garmin analysis, we determined that
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`the first Graham factor has not been met, i.e., Smartflash has not made more
`
`than a mere allegation that something useful will be found.
`
`Apple cited Ariosa Diagnostics, Inc. v. Sequenom, Inc., 2015 WL
`
`3634649, *7__F.3d___(Fed. Cir. June 12, 2015), which is instructive on the
`
`issue of preemption. In Ariosa, the Federal Circuit acknowledged that
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`“questions on preemption are inherent in and resolved by the § 101
`
`analysis.” Id. The Federal Circuit further stated,
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`While preemption may signal patent ineligible subject matter,
`the absence of complete preemption does not demonstrate
`patent eligibility. In this case, Sequenom’s attempt to limit the
`breadth of the claims by showing alternative uses of cffDNA
`outside of the scope of the claims does not change the
`conclusion that the claims are directed to patent ineligible
`subject matter. Where a patent’s claims are deemed only to
`disclose patent ineligible subject matter under the Mayo
`framework, as they are in this case, preemption concerns are
`fully addressed and made moot.
`
`Id. (emphasis added). The Federal Circuit’s holding, thus, minimizes
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`the relevance of Apple’s assertion of non-infringing alternatives in
`
`district court to the section 101 issues, including preemption,
`
`presented in these proceedings. Moreover, even assuming the
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`requested discovery relating to non-infringing alternatives was
`
`relevant, Smartflash has not satisfied the fifth prong of Garmin.
`
`Specifically, Smartflash’s request is overly burdensome because
`
`Smartflash’s request is, in essence, a request to import the district
`
`court infringement case into these proceedings. As we related during
`
`4
`
`

`
`CBM2015-00028 (Patent 7,334,720 B2)
`CBM2015-00029 (Patent 7,334,720 B2)
`CBM2015-00031 (Patent 8,336,772 B2)
`CBM2015-00032 (Patent 8,336,772 B2)
`CBM2015-00033 (Patent 8,336,772 B2)
`
`the teleconference, we do not have the resources to determine whether
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`certain products are in fact “non-infringing alternatives.” Thus, we
`
`denied Smartflash’s request for authorization to file a motion for
`
`discovery.
`
`
`
`It is:
`
`ORDERED that Smartflash shall file the transcript of the present
`
`teleconference in each of the cases identified above; and
`
`FURTHER ORDERED that Smarthflash’s request for authorization to
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`file a motion for discovery is denied.
`
`
`
`
`
`
`
`
`
`5
`
`

`
`CBM2015-00028 (Patent 7,334,720 B2)
`CBM2015-00029 (Patent 7,334,720 B2)
`CBM2015-00031 (Patent 8,336,772 B2)
`CBM2015-00032 (Patent 8,336,772 B2)
`CBM2015-00033 (Patent 8,336,772 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
`
`6