Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 13
`Entered: August 5, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS AMERICA, INC. and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`____________
`
`Case CBM2015-00059
`Patent 8,336,772
`____________
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, GREGG I. ANDERSON,
`and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review and
`Grant of Motion for Joinder
`37 C.F.R. § 42.208
`37 C.F.R. § 42.222(b)
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 13
`Entered: August 5, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS AMERICA, INC. and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`____________
`
`Case CBM2015-00059
`Patent 8,336,772
`____________
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, GREGG I. ANDERSON,
`and MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review and
`Grant of Motion for Joinder
`37 C.F.R. § 42.208
`37 C.F.R. § 42.222(b)
`
`
`
`
`
`
`CBM2015-00059
`Patent 8,336,772
`
`
`I. INTRODUCTION
`
`Samsung Electronics America, Inc. and Samsung Electronics, Co.,
`Ltd. (“Samsung” or “Petitioner Samsung”) filed a Petition requesting
`covered business method patent review of claims 5, 10, 14, 26, and 32 (the
`“challenged claims”) of U.S. Patent No. 8,336,772 (Ex. 1001, “the ’772
`patent”) (“Pet.,” Paper 2). On May 11, 2015, Smartflash LLC (“Patent
`Owner”), filed a Preliminary Response (“Prelim. Resp.,” Paper 10).
`We have jurisdiction under 35 U.S.C. § 324, which provides that a
`covered business method patent review may not be instituted “unless . . . it is
`more likely than not that at least 1 of the claims challenged in the petition is
`unpatentable.”
`Concurrently with its Petition, Samsung filed a first Motion for
`Joinder (Paper 3, 1), seeking to consolidate this case with earlier filed
`petitions for covered business method patent reviews of the ’772 patent,
`CBM2014-00200 and CBM2014-00204. Both of these petitions were
`denied. Samsung Electronics America, Inc. v. Smartflash LLC, Case
`CBM2014-00200 (PTAB March 30, 2015) (Paper 9, 17); see also Paper 10,
`7 (denying request for rehearing); Samsung Electronics America, Inc. and
`Samsung Electronics Co., Ltd. v. Smartflash LLC, Case CBM2014-00204
`(PTAB March 30, 2015) (Paper 9, 28); see also id. at Paper 12, 6 (denying
`request for rehearing). Thus, Samsung’s first Motion for Joinder is moot.
`Samsung filed a second Motion for Joinder (“Mot.,” Paper 11),
`seeking to consolidate this petition with each of the covered business method
`patent reviews in Apple Inc. v. Smartflash, LLC, CBM2015-00031, 00032,
`and 00033 (collectively, the “Apple CBM Proceedings,” and “Petitioner
`Apple” when the Petitioner in those reviews is referenced), which were
`
`2
`
`
`
`CBM2015-00059
`Patent 8,336,772
`
`instituted on May 28, 2015. See CBM2015-00031 (Paper 11, 19) (instituting
`review of claims 1, 5, 8, and 10 of the ’772 patent under 35 U.S.C. § 101);
`CBM2015-00032 (Paper 11, 18) (instituting review of claims 14, 19, and 22
`of the ’772 patent under 35 U.S.C. § 101); and CBM2015-00033 (Paper 11,
`19) (instituting review of claims 25, 26, 30, and 32 of the ’772 patent under
`35 U.S.C. § 101). Smartflash filed an Opposition to Samsung’s second
`Motion for Joinder. Paper 12 (“Opp.”).
`For the reasons explained below, we institute a covered business
`method patent review of claims 5, 10, 14, 26, and 32 of the ’772 patent and
`grant Samsung’s second Motion for Joinder.
`
`II. INSTITUTION OF COVERED BUSINESS METHOD PATENT
`REVIEW ON SAME GROUND AS THOSE ASSERTED IN THE
`APPLE CBM PROCEEDINGS
`In view of the identity of the challenges in the instant Petition and
`those of the institutions in each of CBM2015-00031, CBM2015-00032, and
`CBM2015-00033, we determine that it is more likely than not that Samsung
`will prevail in demonstrating that the claims challenged in Samsung’s
`present petition are unpatentable. We previously have determined that the
`’772 patent is a “covered business method patent.” AIA § 18(d)(1); see 37
`C.F.R. § 42.301(a); see also CBM2015-00031, Paper 11, 7–11 (determining
`that the ’772 patent is eligible for covered business method patent review
`based on claim 8); CBM2015-00032, Paper 11, 6–10 (determining that the
`’772 patent is eligible for covered business method patent review based on
`claim 19); CBM2015-00033, Paper 11, 7–11 (determining that the ’772
`patent is eligible for covered business method patent review based on claim
`30). Smartflash argues that in the present petition, Samsung “has cited claim
`
`3
`
`
`
`CBM2015-00059
`Patent 8,336,772
`
`10 (which depends from claim 8) as being the basis for requesting that a
`covered business method reviews be instituted” and argues that “claim 10 is
`not a proper basis for instituting a CBM review.” Prelim. Resp. 47–48; see
`also Prelim. Resp. 48–55 (arguing that claim 10 does not recite a financial
`product or service). We need not address the merits of Smartflash’s
`argument with respect to claim 10 because we have previously determined
`that the ’772 patent contains at least one claim that is eligible for covered
`business method patent review. See Transitional Program for Covered
`Business Method Patents—Definitions of Covered Business Method Patent
`and Technological Invention; Final Rule, 77 Fed. Reg. 48,734, 48,736 (Aug.
`14, 2012) (“CBM Rules”) (Comment 8) (A patent need have only one claim
`directed to a covered business method to be eligible for review). We further
`note that Samsung refers to claim 8 in its discussion of the ’772 patent’s
`eligibility for review. Pet. 8.
`Moreover, Samsung’s Petition challenges a subset of the claims based
`upon the same ground, 35 U.S.C. § 101, for which we instituted covered
`business method patent reviews in each of the Apple CBM proceedings.
`Mot. 3. Specifically, Samsung challenges claims 5, 10, 14, 26, and 32. Pet.
`1; Mot. 3. In CBM2015-00031, our institution included a review of claims 5
`and 10 under § 101. Paper 11, 19. In CBM2015-00032, our institution
`included a review of claim 14 under § 101. Paper 11, 18. In CBM2015-
`00033, our institution included a review of claims 26 and 32 § 101. Paper
`11, 19.
`We have reviewed Smartflash’s present preliminary response and are
`not persuaded that we should deny institution of the present petition. For
`example, in support of its argument that the challenged claims are directed to
`
`4
`
`
`
`CBM2015-00059
`Patent 8,336,772
`
`statutory eligible subject matter, Smartflash relies heavily on DDR Holdings,
`LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), a decision that
`issued before we instituted each of the Apple CBM proceedings. See
`Prelim. Resp. at 6–28. Smartflash also argues that the challenged claims do
`not result in inappropriate preemption (Prelim. Resp. 27–41) and that “there
`are numerous non-infringing alternatives” (Prelim. Resp. 30). The Federal
`Circuit, however, has recently acknowledged that “questions on preemption
`are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc.
`v. Sequenom, Inc., __F.3d__, 2015 WL 3634649, at *7 (Fed. Cir. June 12,
`2015). The Federal Circuit further stated,
`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).
`Accordingly, we institute a covered business method patent review in
`this proceeding on the same ground, namely § 101, as that on which we
`instituted in the Apple CBM proceedings for claims 5, 10, 14, 26, and 32 of
`the ’772 patent. We do not institute a covered business method patent
`review on any other ground.
`
`III. GRANT OF MOTION FOR JOINDER
`Smartflash opposes Samsung’s request to consolidate the present
`petition with the Apple CBM proceedings. Paper 12. Smartflash opposes
`
`5
`
`
`
`CBM2015-00059
`Patent 8,336,772
`
`consolidation for the following reasons: “(i) it is too late for the proposed
`joinder to provide the purported efficiencies Petitioner suggests; (ii) the
`cases are sufficiently different in terms of proffered exhibits and witnesses to
`gain any advantage by joinder; and (iii) the Board should exercise its
`discretion under 35 U.S.C. § 325(d) and decline to institute a covered
`business method patent review of claims 5, 10, 14, 26, and 32 of U.S. Patent
`8,336,772 on 35 U.S.C. § 101 grounds in CBM2015-00059 because it has
`already instituted covered business method review of those claims on the
`same grounds in CBM2015-00031, -00032, and -00033.” Id. at 1–2. We are
`not persuaded by Smartflash’s argument.
`Smartflash contends that it is too late for the proposed consolidation
`to provide efficiencies because the Apple CBM proceedings have proceeded
`through Patent Owner discovery with Patent Owner’s Response being filed
`on July 29, 2015, the same day the present Opposition was filed, and
`Samsung’s proposed schedule for consolidation is “impractical.” Opp. 3–4.
`To address this concern, however, we determine that the Scheduling Order
`in place for CBM2015-00031, CBM2015-00032, and CBM2015-00033 shall
`govern the consolidated proceedings.
`Smartflash next argues that there is not complete overlap in exhibits
`and witnesses relied upon by Samsung and the record in the Apple CBM
`proceedings. Id. at 5–6. Thus, contends Smartflash, “[consolidation] would
`force Patent Owner to respond to different sets of evidence simultaneously,
`on a compressed schedule, and in more limited space.” Id. at 6. However,
`in the event we do not “grant joinder of the arguments articulated in the
`Samsung Petition and accompanying evidence, Samsung alternatively . . .
`accepts that the Board would, in that case, proceed on the basis of argument
`
`6
`
`
`
`CBM2015-00059
`Patent 8,336,772
`
`and evidence presented by Apple Inc. (“Apple”) in the Apple CBM
`Proceedings.” Mot. 11–12. To address Smartflash’s concerns, trial will
`proceed on the basis of the argument and evidence presented by Petitioner
`Apple in each of the Apple CBM proceedings without submission of
`additional evidence from Petitioner Samsung. Any additional evidence,
`papers, and briefing filed on behalf of Petitioner Apple and Petitioner
`Samsung in the consolidated proceedings shall be filed by Petitioner Apple,
`as a consolidated filing, unless we provide authorization otherwise, as noted
`below.
`Lastly, Smartflash argues that we should exercise our discretion under
`35 U.S.C. § 325(d) by declining to institute a review in the instant case
`because we have already instituted review of the same challenged claims “on
`the same purely legal § 101 grounds in” the Apple CBM proceedings. Opp.
`6–7. We decline to exercise our discretion under § 325(d) because we
`consolidate these proceedings based on the same schedule, evidence, and
`argument proffered in the Apple CBM proceedings. With respect to
`Smartflash’s assertion that Samsung already sought review of the challenged
`claims on § 101 grounds in CBM2014-00204 and we declined to institute a
`review (id. at 7), we are persuaded by Samsung’s explanation that the listing
`of a § 101 challenge in a table in the CBM2014-000204 corrected petition
`was a clerical error (Paper 8, 1–2).
`As noted above, we instituted the Apple CBM proceedings on May
`28, 2015. Samsung filed the instant petition on January 15, 2015, and its
`Second Motion for Joinder was filed on Monday, June 29, 2015. Mot. 13.
`Thus, Samsung’s request satisfies the requirement that the consolidation
`request be made no later than one month after the institution date of the
`
`7
`
`
`
`CBM2015-00059
`Patent 8,336,772
`
`Apple CBM proceedings. See 35 U.S.C. § 325(c) and 37 C.F.R. §§ 42.22
`and 42.222(b); Fed. R. Civ. P. 6(a).
`As noted above, the only ground upon which we institute a covered
`business method patent review in this proceeding is a challenge to claims 5,
`10, 14, 26, and 32 of the ’772 patent based on § 101. Samsung, thus, does
`not assert any new ground of unpatentability that is not already being
`considered in the Apple CBM proceedings. Mot. 6–7.
`Under the circumstances, we conclude Samsung has demonstrated
`that consolidation will not unduly complicate or delay the Apple CBM
`proceedings, and therefore, we grant Samsung’s second Motion for Joinder
`to consolidate this proceeding with each of the Apple CBM proceedings,
`CBM2015-00031, CBM2015-00032, and CBM2015-00033, as follows. We
`consolidate Samsung’s challenge to claims 5 and 10 based on § 101 to
`CBM2015-00031, Samsung’s challenge to claim 14 based on § 101 to
`CBM2015-00032, Samsung’s challenge to claims 26 and 32 based on § 101
`to CBM2015-00033. All filings in the consolidated proceedings will be
`made by Petitioner Apple in each of the Apple CBM proceedings. Petitioner
`Samsung shall not file any separate papers or briefing in these consolidated
`proceedings without authorization from the Board. In addition, Petitioner
`Samsung shall not seek any additional discovery beyond that sought by
`Petitioner Apple.
`Petitioner Apple and Petitioner Samsung shall resolve any disputes
`between them concerning the conduct of the consolidated proceedings and
`shall contact the Board if any such matters cannot be resolved. No
`additional burdens shall be placed on Smartflash as a result of the
`consolidation.
`
`8
`
`
`
`CBM2015-00059
`Patent 8,336,772
`
`
`In consideration of the above, we institute a covered business method
`patent review in CBM2015-00059 and grant Petitioner’s Samsung’s motion
`to consolidate this proceeding with each of the Apple CBM proceedings as
`stated above.
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that challenges to claims 5, 10, 14, 26, and 32 in
`CBM2015-00059 is instituted;
`FURTHER ORDERED that Samsung’s challenge to claims 5 and 10
`based on § 101 is consolidated with CBM2015-00031;
`FURTHER ORDERED that Samsung’s challenge to claim 14 based
`on § 101 is consolidated with CBM2015-00032;
`FURTHER ORDERED that Samsung’s challenge to claims 26 and 32
`based on § 101 is consolidated with CBM2015-00033;
` FURTHER ORDERED that the grounds on which CBM2015-00031,
`CBM2015-00032, and CBM2015-00033 were instituted are unchanged, and
`no other grounds are instituted in the consolidated proceeding;
`FURTHER ORDERED that the Scheduling Order in place for
`CBM2015-00031, CBM2015-00032, and CBM2015-00033 shall govern the
`consolidated proceedings;
`FURTHER ORDERED that the record in each of the Apple CBM
`proceedings will remain unchanged;
`FURTHER ORDERED that, throughout the consolidated proceeding,
`any paper, except for a motion that does not involve the other party, shall be
`filed by Petitioner Apple, as a single, consolidated filing on behalf of
`
`9
`
`
`
`CBM2015-00059
`Patent 8,336,772
`
`Petitioner Apple and Petitioner Samsung, and Petitioner Apple will identify
`each such filing as a consolidated filing;
`FURTHER ORDERED that except as otherwise agreed by counsel,
`Petitioner Apple will conduct cross-examination and other discovery on
`behalf of Petitioner Apple and Petitioner Samsung and that Patent Owner is
`not required to provide separate discovery responses or additional deposition
`time as a result of the consolidation;
`FURTHER ORDERED that CBM2015-00059 is terminated under
`37 C.F.R. § 42.72, and all further filings in the consolidated proceedings are
`to be made in each of CBM2015-00031, CBM2015-00032, and CBM2015-
`00033;
`FURTHER ORDERED that a copy of this Decision will be entered
`into the record of CBM2015-00031, CBM2015-00032, CBM2015-00033,
`and CBM2015-00059; and
`FURTHER ORDERED that the case caption in each of CBM2015-
`00031, CBM2015-00032, and CBM2015-00033 shall be changed to reflect
`consolidation with this proceeding in accordance with the attached
`examples.
`
`
`10
`
`
`
`CBM2015-00059
`Patent 8,336,772
`
`
`
`FOR PETITIONER:
`
`Walter Renner
`Thomas Rozylowicz
`FISH & RICHARDSON P.C.
`axf@fr.com
`CBM39843-0008CP3@fr.com
`
`FOR PATENT OWNER:
`
`Michael Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY, LLP
`smartflash-cbm@dbjg.com
`jsd@dbjg.com
`
`
`
`11
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.,
`SAMSUNG ELECTRONICS LTD, and
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner,
`
`v.
`
`SMARTFLASH LLC
`Patent Owner.
`____________
`
`Case CBM2015-000311
`Patent 8,336,772
`____________
`
`
`
`
`
`
`
`
`
`
`1 Challenge to claims 5 and 10 based on 35 U.S.C. § 101 in CBM2015-
`00059 has been consolidated with this proceeding.
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.,
`SAMSUNG ELECTRONICS LTD, and
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner,
`
`v.
`
`SMARTFLASH LLC
`Patent Owner.
`____________
`
`Case CBM2015-000321
`Patent 8,336,772
`____________
`
`
`
`
`
`
`
`
`
`
`1 Challenge to claim 14 based on 35 U.S.C. § 101 in CBM2015-00059 has
`been consolidated with this proceeding.
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC.,
`SAMSUNG ELECTRONICS LTD, and
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner,
`
`v.
`
`SMARTFLASH LLC
`Patent Owner.
`____________
`
`Case CBM2015-000331
`Patent 8,336,772
`____________
`
`
`
`
`
`
`
`
`
`
`1 Challenge to claims 26 and 32 based on 35 U.S.C. § 101 in CBM2015-
`00059 has been consolidated with this proceeding.
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