Attorney Docket No.: 39843-0008CP3
`
`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
`
`______________________
`
`
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 325(c) AND 27 C.F.R. § 42.222(b) OR, IN THE
`ALTERNATIVE, FOR COORDINATION OF SCHEDULE, AND
`REQUEST FOR SHORTENED RESPONSE TIME FOR
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`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
`
`______________________
`
`
`
`PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 325(c) AND 27 C.F.R. § 42.222(b) OR, IN THE
`ALTERNATIVE, FOR COORDINATION OF SCHEDULE, AND
`REQUEST FOR SHORTENED RESPONSE TIME FOR
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`
`Case CBM2015-00059
`U.S. Patent No. 8,336,772
`
`I.
`
`RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 325(c) and 37 C.F.R. § 42.222(b), Samsung
`
`Electronics America, Inc. and Samsung Electronics Co., Ltd. (“Petitioner” or
`
`“Samsung”) hereby move for joinder of any proceeding resulting from its new
`
`Petition for Covered Business Method Patent Review (“CBM”) of United States
`
`Patent No. 8,336,772 (“the ’772 patent”)— filed concurrently with this Motion—
`
`with the earlier-filed but not-yet instituted CBMs for the ’772 patent, CBM2014-
`
`00200 and -00204, which involve the same parties. In the alternative, if the Board
`
`does not grant joinder, Petitioner requests that the Board coordinate the schedules
`
`of each proceeding such that, at minimum, the oral arguments (if requested) occur
`
`at the same time, facilitating entry of concurrent Final Written Decisions.
`
`In conjunction with this request for joinder or coordination, Petitioner
`
`respectfully requests that the Board specify a shortened response period of four (4)
`
`to six (6) weeks (until February 12th or 26th) in which Patent Owner Smartflash
`
`LLC (“Patent Owner”) may file a Preliminary Response to the new Petition.
`
`Given the relationship of issues presented by this new Petition and those raised by
`
`Apple in co-pending proceedings which challenge the same claims under 35
`
`U.S.C. § 101, as well as the relationship between issues presented by this new
`
`Petition and those raised by Samsung in its earlier Petitions which provide art
`
`grounds relied upon within the new Petition, the proposal for a shortened response
`
`
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`2
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`Case CBM2015-00059
`U.S. Patent No. 8,336,772
`period does not impose an undue burden on Patent Owner. Rather, given its need
`
`to have already considered subject-matter eligibility responsive to the Apple
`
`petitions filed November 25, 2014, and its need to have already considered the
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`overlapping nature of prior art when considering Samsung’s previous Petitions
`
`filed September 26, 2014, the proposed response periods should be more than
`
`adequate for Patent Owner to furnish a Preliminary Response. Moreover, in
`
`establishing a deadline of February 12th or 26th, the Board will provide itself with
`
`more time before institution decisions are due for CBM2014-00200 and -00204 to
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`consider any additional information furnished by Patent Owner in its Preliminary
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`Responses to the new Petition, if any are raised.
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`Alternatively, if the Board declines to establish the proposed response
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`deadline for the Preliminary Response, Petitioner nevertheless maintains its motion
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`for joinder, and simply notes that the Board is under no obligation to coordinate its
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`institution decision (or joinder decision) in the instant Petition with the institution
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`decisions due in CBM2014-00200 and -00204.1
`
`
`1 In CBM2014-00200 and -00204, Patent Owner filed its Preliminary Responses on
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`January 6, 2015 and the Board’s subsequent institution decisions and scheduling
`
`orders will, thus, be due no later than April 6, 2015, pursuant to 35 U.S.C. §
`
`324(c).
`
`
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`3
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`Case CBM2015-00059
`U.S. Patent No. 8,336,772
`
`II.
`
`1.
`
`STATEMENT OF MATERIAL FACTS
`
`On September 26, 2014, Petitioner filed two petitions for CBM review
`
`of the ’772 patent for claims 5, 10, 14, 26, 32. See generally CBM2014-00200 and
`
`-00204, Paper 4. These two petitions for CBM review challenged claims 5, 10, 14,
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`26, 32 of the ’772 patent only on grounds pursuant to 35 U.S.C. §§ 102 and 103.
`
`2.
`
`On October 6, 2014, Petitioner’s two previous petitions for CBM
`
`review of the ’772 patent (i.e., CBM2014-00200 and -00204) were accorded filing
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`dates, and a due date of January 6, 2015 was set for Patent Owner’s Preliminary
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`Response. See CBM2014-00200 and -00204, Paper 3.
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`3.
`
`On November 25, 2014, Apple Inc. filed three petitions for CBM
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`review of the ’772 patent: CBM2015-00031, -00032, and -00033. As a whole,
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`these three petitions asserted grounds of unpatentability of claims 1, 5, 8, 10, 14,
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`19, 22, 25, 26, 30, and 32 of the ’772 patent (a superset of the claims challenged by
`
`Petitioner) under each of 35 U.S.C. §§ 101, 102, and 103.
`
`4.
`
`On January 6, 2015, Patent Owner filed its Preliminary Responses in
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`CBM2014-00200 and -00204. Accordingly, the deadline for the Board to issue
`
`institution decisions in each of CBM2014-00200 and -00204 does not expire until
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`April 6, 2015.
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`5.
`
`As of the date Petitioner is concurrently filing its new Petition for
`
`Covered Business Method Patent Review (“CBM”) of United States Patent No.
`
`
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`4
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`
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`Case CBM2015-00059
`U.S. Patent No. 8,336,772
`8,336,772 and this motion, the Board has not yet issued institution decisions in
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`CBM2014-00200 or -00204.
`
`6.
`
`Petitioner’s new Petition for Covered Business Method Patent Review
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`(“CBM”) of United States Patent No. 8,336,772 challenges claims 5, 10, 14, 26, 32
`
`of the ’772 patent only on grounds pursuant to 35 U.S.C. § 101. In other words,
`
`Petitioner’s new Petition for CBM challenges the same claims as Petitioner’s two
`
`previous petitions for CBM review of the ’772 patent (i.e., CBM2014-00200 and -
`
`00204), and while the new Petition challenges are pursuant to different statutory
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`grounds, they rely upon prior art advanced in its earlier CBM filings.
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`III. DISCUSSION
`
`The requested joinder will serve to secure the just, speedy, and inexpensive
`
`resolution of these proceedings. Under 35 U.S.C. § 325(c):
`
`If more than 1 petition for a post-grant [or covered business method]
`review under this chapter is properly filed against the same patent and
`the Director determines that more than 1 of these petitions warrants
`the institution of a post-grant review under section 324, the Director
`may consolidate such reviews into a single post-grant [or covered
`business method] review.
`
`In addition, 37 C.F.R. § 42.222(b) provides that “[j]oinder may be requested
`
`by a patent owner or petitioner. Any request for joinder must be filed, as a motion
`
`under § 42.22, no later than one month after the institution date of any post-grant
`
`
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`5
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`Case CBM2015-00059
`U.S. Patent No. 8,336,772
`[or covered business method] review for which joinder is requested.” This Motion
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`is timely under § 42.222(b) because Petitioner’s previous two Petitions for CBM
`
`review of the ’772 patent (i.e., CBM2014-00200 and -00204) have not yet been
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`instituted.
`
`The Board has further provided that a motion for joinder should: (1) set forth
`
`the reasons why joinder is appropriate; (2) identify any new grounds of
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`unpatentability asserted in the petition; (3) explain what impact (if any) joinder
`
`would have on the trial schedule of the existing proceeding; and (4) address
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`specifically how briefing and discovery may be simplified. See, e.g., Kyocera
`
`Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (Apr. 24, 2013). Analysis of
`
`these factors here warrants the Board’s use of its discretion to grant the requested
`
`joinder. Indeed, the Board has favorably considered similar Motions with regard
`
`to patents in the same family as the ’772 patent and involving the same Patent
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`Owner in cases CBM2014-00102, -00106, -00108, and -00112, and CBM2015-
`
`00015, -00016, -00017, -00018.
`
`A.
`
`Joinder is Appropriate Because All Three Proceedings Involve the
`Same Patent, the Same Claims, and the same Parties
`
`The existence of several similarities between Petitioner’s previous two
`
`Petitions for CBM review of the ’772 patent (i.e., CBM2014-00200 and -00204)
`
`and the new Petition supports application of joinder. The same patent, parties, and
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`6
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`Case CBM2015-00059
`U.S. Patent No. 8,336,772
`counsel are involved in both proceedings. A common expert for Petitioner is
`
`involved in both proceedings—and, presumably, Patent Owner may use a common
`
`expert in both proceedings. Overlapping claims are at issue in both proceedings—
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`on grounds for § 103 in the previously filed CBMs and for § 101 in the new
`
`Petition.
`
`Importantly, joinder is not required for institution of the new Petition.
`
`Therefore, joinder to or, alternatively, coordination of schedule with proceedings
`
`resulting from Petitioner’s previous two Petitions simply provides a mechanism for
`
`the efficient adjudication of all three proceedings, particularly in light of the above-
`
`noted commonalities. As will be described in greater detail below, the new
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`Petition adds a single new proposed ground of unpatentability under § 101 with
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`regard to each of the claims challenged in Petitioner’s previous two Petitions. The
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`Board itself noted that grounds of unpatentability under § 101 “raise purely legal
`
`issues,” and Patent Owner will already be required to address grounds raised under
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`§ 101 with regard to claims 1, 5, 8, 10, 14, 19, 22, 25, 26, 30, and 32 of the ’772
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`patent (a superset of the claims challenged by Petitioner) in the three Petitions for
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`CBM review brought by Apple Inc. on November 25, 2014 (CBM2015-00031, -
`
`00032, and -00033).
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`Accordingly, for at least the reasons outlined in this motion, any proceeding
`
`resulting from Petitioner’s new Petition for CBM review should appropriately be
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`
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`7
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`Case CBM2015-00059
`U.S. Patent No. 8,336,772
`joined to or, alternatively, coordinated with any proceeding(s) resulting from
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`Petitioner’s two previous petitions for CBM review of the ’772 patent (i.e.,
`
`CBM2014-00200 and -00204).
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`B.
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`The New Petition for CBM Review Presents Complimentary, Non-
`Redundant Grounds
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`Petitioner’s new Petition for CBM review of the ’772 patent raises a single
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`new ground of unpatentability under § 101 with regard to each of the claims
`
`challenged in Petitioner’s previous two Petitions. As Petitioner has not previously
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`filed a civil action challenging the validity of a claim of the ’772 patent, raised a
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`ground of unpatentability under § 101 with regard to these claims previously, or
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`yet been a real party in interest or privy to a final written decision under section
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`328(a) regarding the challenged claims, the grounds raised in Petitioner’s new
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`Petition are not precluded by any of 35 U.S.C. §§ 325(a), (d), or (e). Accordingly,
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`Petitioner’s new Petition is not subject to any procedural bars to institution, and
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`does not require joinder with Petitioner’s previous two Petitions in order to be
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`instituted.
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`Rather, joinder or, alternatively, coordination of schedule between
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`Petitioner’s new Petition for CBM review and Petitioner’s previous two Petitions
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`simply benefits the efficient adjudication of three proceedings involving the same
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`claims, parties, and counsel. Though Petitioner’s new Petition raises a different
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`8
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`Case CBM2015-00059
`U.S. Patent No. 8,336,772
`ground of unpatentability than was raised in Petitioner’s previous two Petitions, it
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`is a ground with regard to which Patent Owner will already be defending itself in
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`three Petitions for CBM review brought by Apple Inc. on November 25, 2014
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`(CBM2015-00031, -00032, and -00033).
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`These three Apple petitions challenge claims 1, 5, 8, 10, 14, 19, 22, 25, 26,
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`30, and 32 of the ’772 patent under § 101, which is a superset of the claims
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`challenged by Petitioner in its new Petition (i.e., claims 5, 10, 14, 26, and 32).
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`However, by articulating its own arguments and presenting its own evidence,
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`Petitioner seeks to preserve its independent right to challenge the patentability of
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`claims 5, 10, 14, 26, and 32 under § 101, particularly given that Apple Inc. may
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`settle with Patent Owner before the full adjudication of its proceedings.
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`Additionally, the Board has acknowledged the relationship between the
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`“purely legal issues” raised by challenges under § 101 and challenges of claims in
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`the same patent under §§ 102 and 103. See Apple Inc. v. Smartflash LLC
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`(CBM2015-00015, -00016, -00017), Paper 6, p. 2 (PTAB Nov. 13, 2014). Thus,
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`the grounds under § 101 raised in Petitioner’s new Petition complement the
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`grounds under §§ 102 and 103 raised in Petitioner’s previous two Petitions. As
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`will be described below, joinder of or, alternatively, coordination between
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`proceedings involving the various non-redundant, complimentary grounds raised
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`by Petitioner need not affect any scheduling with regard to the two previously filed
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`9
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`Case CBM2015-00059
`U.S. Patent No. 8,336,772
`petitions and will, in fact, increase the efficiency with which all grounds are
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`adjudicated by the parties and the Board.
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`C.
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`Given Its Early Stage, Joinder Should Not Have Any Impact on the
`Trial Schedule of the Existing Proceeding
`
`Petitioner’s previous two Petitions for CBM review of the ’772 patent have
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`not yet been instituted. The Board’s institution decision is not due until April 6,
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`2105. Accordingly, by shortening the period of Patent Owner’s Preliminary
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`Response in this proceeding, the Board can consider institution and later arguments
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`made in all three of Petitioner’s petitions simultaneously, allowing the Board to set
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`and administer a common schedule deemed reasonable for adjudicating the issues
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`set forth in all three of Petitioner’s Petitions. In other words, the proposed joinder
`
`or coordination of proceedings will not necessarily have any dilatory impact on the
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`schedule of any trial(s) resulting from Petitioner’s previous two Petitions. Rather,
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`joining Petitioner’s new Petition for CBM review of the ’772 patent to its previous
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`two Petitions will promote efficiencies.
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`Indeed, with regard to numerous patents in the same family as the ’772
`
`patent, the Board recognized that benefits will flow from coordinating adjudication
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`of petitions involving the same patent, parties, and counsel that were filed at
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`different times may be necessary. See Apple Inc. v. Smartflash LLC (CBM2015-
`
`00015, -00016, -00017), Paper 6, p. 2 (PTAB Nov. 13, 2014) (“ . . . we may need
`
`
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`10
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`Case CBM2015-00059
`U.S. Patent No. 8,336,772
`to coordinate schedules should we institute trials in the 2015 set of petitions . . .”).
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`Notably, in those cases, the later-filed petitions were not filed until a month after
`
`institution of the petitions to which they were being joined. Thus, in those cases,
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`the Board was considering joinder and/or coordination of schedule, despite a much
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`greater difference in schedule than is present between Petitioner’s three petitions.
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`Moreover, as noted previously, Patent Owner will already be required to
`
`address grounds under § 101 regarding the patentability of all of the challenged
`
`claims in in three Petitions for CBM review brought by Apple Inc. on November
`
`25, 2014 (CBM2015-00031, -00032, and -00033). In the Apple CBMs, Patent
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`Owner’s Preliminary Response is due March 3, 2015, less than two weeks after the
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`date to which Petitioner is requesting Patent Owner’s Preliminary Response be
`
`accelerated for Petitioner’s new Petition. See Apple Inc. v. Smartflash LLC
`
`(CBM2015-00031), Paper 3, p. 1 (PTAB Dec. 3, 2014). Accordingly, Patent
`
`Owner will experience little, if any, prejudice as a result of the accelerated due date
`
`of its Preliminary Response to Petitioner’s new Petition, because Patent Owner
`
`will have been considering and preparing a response to grounds under § 101 with
`
`regard to the challenged claims for over two and a half months.
`
`D.
`
`Joinder Will Simplify Briefing and Discovery Because All Three
`Petitions Share a Declarant and a Single Oral Hearing Will Improve
`Efficient Adjudication of Complimentary Issues
`
`
`
`11
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`Case CBM2015-00059
`U.S. Patent No. 8,336,772
`Because grounds of unpatentability under § 101 “raise purely legal issues,”
`
`there is necessarily less discovery involved than would normally be involved with
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`regard to grounds of unpatentability under §§ 102 and 103, which raise both
`
`factual and legal issues. In addition, all three of Petitioner’s petitions for CBM
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`review of the ’772 patent share a common expert (i.e., Dr. Jeffrey Bloom).
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`Accordingly, joining Petitioner’s new Petition for CBM review of the ’772 patent
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`to its previous two Petitions or, alternatively, coordinating the schedules of the
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`three reviews will allow for common discovery with regard to Dr. Bloom (e.g., a
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`common date for depositions).
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`Though Petitioner’s new Petition also relies upon an additional declaration
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`by Steven Blumenfeld, who is not involved in Petitioner’s previous two Petitions,
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`Petitioner will seek to work with Patent Owner to coordinate reasonable
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`availability of both declarants for deposition in order to facilitate reduced travel
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`expenses and related preparation time, thus reducing any attendant burdens
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`perceived by Patent Owner. Moreover, to the extent Patent Owner relies upon one
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`or more common declarant(s) in its responses to Petitioner’s three Petitions, which
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`would seem likely, joinder or coordination of these proceedings will permit
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`efficient discovery with regard to the common declarant(s).
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`In addition, where, as here, multiple reviews involve the same claims, there
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`are general efficiencies gained in coordinated briefing and discovery with regard to
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`12
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`Case CBM2015-00059
`U.S. Patent No. 8,336,772
`common claims, even where the two reviews advance different legal grounds. For
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`example, as addressed in Petitioner’s new Petition, recent case law has continued
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`to evolve the inquiry of patentability under § 101 to account for the state of the
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`prior art, a consideration very much applicable to and informed by grounds of
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`unpatentabiliy raised under §§ 102 and 103. Moreover, there exist inherent
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`efficiencies in simultaneously preparing briefings and discovery involving
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`common claims, as the underlying subject matter (i.e., the claims and their related
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`disclosure), and thus familiarity therewith, will be shared. The Board’s
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`participation in an oral argument, if requested, and subsequent preparation of one
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`or more final written decisions will similarly benefit from the coordination of any
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`proceedings resulting from Petitioner’s three Petitions.
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`IV. CONCLUSION
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`For the foregoing reasons, Petitioner respectfully requests that the Board
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`grant joinder of the trial resulting from institution of the new Petition filed
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`concurrently with this Motion, with any trial(s) resulting from institution of
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`Petitioner’s two previous petitions for CBM review of the ’772 patent (i.e.,
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`CBM2014-00200 and -00204), or, in the alternative, that the Board coordinate the
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`schedules in these proceedings to allow a common oral argument and synchronized
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`Final Written Decisions. In addition, Petitioner respectfully requests a shortened
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`13
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`U.S. Patent No. 8,336,772
`period of four (4) to six (6) weeks (until February 12th or 26th) for a Patent Owner
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`Preliminary Response.
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`Dated:
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`1/15/2015
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`Respectfully submitted,
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`/W. Karl Renner/
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`W. Karl Renner, Reg. No. 41,265
`Fish & Richardson P.C.
`P.O. Box 1022
`Minneapolis, MN 55440-1022
`T: 202-783-5070
`F: 202-783-2331
`Attorney for Petitioner
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`14
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`CERTIFICATE OF SERVICE
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`
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`Pursuant to 37 CFR §§ 42.6(e)(4)(i) et seq. and 42.105(b), the undersigned
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`certifies that on January 15, 2015, a complete and entire copy of this Motion for
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`Joinder was provided by Federal Express, cost prepaid, to the Patent Owner by
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`serving the correspondence address of record as follows:
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`Davidson Berquist Jackson & Gowdey LLP
`4300 Wilson Blvd., 7th Floor
`Arlington, VA 22203
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`/Christine Rogers/
`Christine Rogers
`Fish & Richardson P.C.
`60 South Sixth Street,
`Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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`
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