`
`_________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________
`
`APPLE INC., SAMSUNG ELECTRONICS CO. LTD, SAMSUNG
`ELECTRONICS AMERICA, INC., and GOOGLE INC.
`Petitioners,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`_________
`
`Case CBM2015-000311
`
`Patent 8,336,772 B2
`
`_________
`
`
`
`PATENT OWNER’S NOTICE OF APPEAL
`
`
`
`
`1 Samsung’s challenge to claims 5 and 10 of US Patent No. 8,336,772 B2 (“the
`’772 patent”) in CBM2015-00059 was consolidated with this proceeding. Paper
`24, 9. Google’s challenge to claims 1, 5, and 10 of the ’772 patent in CBM2015-
`00132 was consolidated with this proceeding. Paper 31, 11; Paper 37, 2–3 (claim 9
`was initially consolidated with this case, but subsequently consolidated with
`another case).
`
`
`
`Notice is hereby given, pursuant to 37 C.F.R. § 90.2(a), that Patent Owner
`
`Smartflash LLC appeals under 35 U.S.C. § 141 to the United States Court of
`
`Appeals for the Federal Circuit from the Final Written Decision entered on May
`
`26, 2016 (Paper 45), the Decision Denying Patent Owner’s Request for Rehearing
`
`entered on August 24, 2016 (Paper 49) and from all underlying orders, decisions,
`
`rulings and opinions regarding U.S. Patent No. 8,336,772 (“the ’772 Patent”)
`
`including the Decision - Institution of Covered Business Method Patent Review
`
`entered on May 28, 2015 (Paper 11).
`
`For the limited purpose of providing the Director with the information
`
`requested in 37 C.F.R. § 90.2(a)(3)(ii), Patent Owner anticipates that the issues on
`
`appeal may include the following, as well as any underlying findings,
`
`determinations, rulings, decisions, opinions, or other related issues:
`
` Whether the Board erred in finding that the subject matter of the
`
`‘772Patent is directed to activities that are financial in nature and in
`
`instituting Covered Business Method review of the ‘772 Patent.
`
` Whether the Board erred in finding that the claims of the ‘772 Patent
`
`are not directed to a “technological invention” as defined in § 18(d)(1)
`
`of the Leahy-Smith America Invents Act;
`
`
`
`1
`
`
`
` Whether the Board’s decisions with respect to the ‘772 Patent were
`
`arbitrary and capricious in light of its decisions on other computer
`
`implemented invention patents;
`
` Whether the Board erred in denying in part Patent Owner’s Motion to
`
`Exclude (Paper 29);
`
` Whether the Board erred in finding that claims 1, 5, 8 and 10 of the
`
`‘772 Patent are drawn to an abstract idea; and
`
` Whether the Board erred in finding that claims 1, 5, 8 and 10 of the
`
`’772 Patent are unpatentable under 35 U.S.C. § 101.
`
`Copies of this Notice of Appeal are being filed simultaneously with the
`
`Director, the Patent Trial and Appeal Board, and the Clerk of the United States
`
`Court of Appeals for the Federal Circuit.
`
`Any required fees may be charged to Deposit Account No. 501860.
`
`Dated: October 24, 2016
`
`/ Michael R. Casey /
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Drive
`Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7705
`Fax: (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`
`
`
`2
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that this PATENT OWNER’S NOTICE
`OF APPEAL was filed with the Patent Trial and Appeal Board using the E2E
`System and was served, by agreement of the parties, by emailing copies to counsel
`for the Petitioner as follows:
`
`Walter Renner (renner@fr.com)
`Thomas Rozylowicz (rozylowicz@fr.com)
`CBM39843-0008CP3@fr.com
`Attorneys for Petitioners Samsung
`Electronics Co., Ltd.
`and Samsung Electronics America, Inc.
`
`J. Steven Baughman
`(steven.baughman@ropesgray.com)
`Megan Raymond
`(megan.raymond@ropesgray.com)
`James R. Batchelder
`(james.batchelder@ropesgray.com)
`ApplePTABService-
`SmartFlash@ropesgray.com
`Attorneys for Petitioner Apple Inc.
`Raymond Nimrod (raynimrod@
`quinnemanuel.com)
`QE-SF-PTAB-Service@quinnemanuel.com
`Attorneys for Petitioner Google Inc.
`The undersigned hereby further certifies that on October 24, 2016 this
`PATENT OWNER’S NOTICE OF APPEAL (and its three attached decisions)
`were filed with the Federal Circuit via CM/ECF (along with one courtesy copy by
`hand delivery) and two (2) copies were served on the U.S. Patent and Trademark
`Office via in-hand delivery as follows:
`
`
`
`
`
`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, 10B20
`600 Dulaney Street
`
`Alexandria, VA 22314‐5793
`
`Dated: October 24, 2016
`
`
`
`
`
`/ Michael R. Casey /
`Michael R. Casey (Reg. No. 40,294)
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Drive - Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7705
`Fax: (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`3