`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 B2
`____________
`
`
`
`PATENT OWNER’S OPPOSITION TO PETITIONER’S MOTION FOR
`JOINDER UNDER 35 U.S.C. § 325(c) AND 37 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
`
`
`
`
`
`
`
`
`
`Patent Owner hereby responds to PETITIONER’S MOTION FOR
`
`JOINDER UNDER 35 U.S.C. § 325(c) AND 37 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. In summary, Patent Owner submits that the
`
`Petition should be denied, rendering this Motion moot, as the Patent Owner will set
`
`out more fully in its Preliminary Response. However, should the Petition be
`
`granted in this case and in at least one of CBM2014-00200 and -00204, Patent
`
`Owner respectfully submits that a scheduling order should be set such that the
`
`schedule of the granted Petition in either CBM2014-00200 and/or -00204 be
`
`coordinated with this case, rather than the other way around. Patent Owner further
`
`opposes the Request for Shortened Response Time for Patent Owner’s Preliminary
`
`Response as the first requested date (February 12, 2015) has already passed, and
`
`the second requested date (February 26, 2015) is in just over a week.
`
`
`I. RESPONSE TO STATEMENT OF MATERIAL FACTS
`
`
`
`1.
`
`The first sentence is admitted. The second sentence is denied as Paper
`
`4 is not the Petition filed on September 26, 2014. The third sentence is denied.
`
`See Paper 2, page 3 of Petition in CBM2014-00204.
`
`2.-5. Admitted.
`
`
`
`
`
`- 1 -
`
`
`
`
`
`6.
`
`The first sentence is admitted. The second sentence is denied in light
`
`of Patent Owner’s understanding of the phrase “while the new Petition challenges
`
`are pursuant to different statutory grounds, they rely upon prior art advanced in its
`
`earlier CBM filings.” To the extent that this is intended to mean the same
`
`references are utilized in the present case as are used in CBM2014-00200 and
`
`-00204, such an assertion is incorrect. Exhibit 1039 is the last exhibit used or
`
`reserved in CBM2014-00200 and -00204. Therefore, for example, Exhibits 1040-
`
`1047 and 1064 are not from CBM2014-00200 and -00204.
`
`
`
`II. STATEMENT OF MATERIAL FACTS
`
`
`
`7.
`
`The first due date (February 12, 2015) proposed by Petitioner for
`
`Patent Owner’s Preliminary Response has already passed. See Motion, page 2.
`
`
`
`8.
`
`The second due date (February 26, 2015) proposed by Petitioner for
`
`Patent Owner’s Preliminary Response is only 8 days away from the filing date of
`
`this Opposition. See Motion, page 2.
`
`
`
`9.
`
`A corrected Notice of Filing Date Accorded to Petition was not
`
`mailed until 8 days ago. See Paper 6.
`
`10.
`
`In the month since the filing of the Petition, Petitioner has not sought
`
`a conference call with Patent Owner and the PTAB to discuss the shortened
`
`response time for Patent Owner’s Preliminary Response.
`
`
`
`- 2 -
`
`
`
`11. Exhibits 1040-1047 and 1064 are not cited in CBM2014-00200.
`
`12. Exhibits 1040-1047 and 1064 are not cited in CBM2014-00204.
`
`13. Page 3 of the Petition in CBM2014-00204 states “Samsung requests a
`
`CBM review of the Challenged Claims on the grounds set forth in the table shown
`
`below, and requests that each of the Challenged Claims be found unpatentable.”
`
`14. The table of page 3 of the Petition in CBM2014-00204 lists as its first
`
`entry “Ground 1 5, 10, 14, 26, 32
`
`
`
`§ 101”.
`
`15. Page 3 of the Corrected Petition in CBM2014-00204 states “Samsung
`
`requests a CBM review of the Challenged Claims on the grounds set forth in the
`
`table shown below, and requests that each of the Challenged Claims be found
`
`unpatentable.”
`
`16. The table of page 3 of the Corrected Petition in CBM2014-00204 lists
`
`as its first entry “Ground 1
`
`5, 10, 14, 26, 32
`
`
`
`§ 101”.
`
`
`
`III.
`
`JOINDER AND/OR SCHEDULE COORDINATION
`
`Patent Owner submits that the Petition should be denied, rendering this
`
`Motion moot, as the Patent Owner will set out more fully in its Preliminary
`
`Response. However, for the purposes of this Opposition, it is noted that Petitioner
`
`cannot show that the Petition meets the second prong of the analysis set out in
`
`Kyocera Corp. v. Softview LLC, IPR2013-00004, Paper 15 at 4 (Apr. 24, 2013), as
`
`
`
`- 3 -
`
`
`
`cited by the Petition. Page 6 of the Petition cites Kyocera as requiring that the
`
`Motion for Joinder “identify any new grounds of unpatentability asserted in the
`
`petition.” In its analysis of the second prong of Kyocera, the Petition alleges that
`
`“Petitioner has not previously ... raised a ground of unpatentability under § 101
`
`with regard to these claims.” Petition at 8. Similarly, the Petition alleges
`
`“Petitioner’s new Petition raises a different ground of unpatentability than was
`
`raised in Petitioner’s previous two Petitions.” Petition at 8-9. Such assertions are
`
`inconsistent with the facts.
`
`As seen in page 3 of the Petition and the Corrected Petition in CBM2014-
`
`00204, Petitioner already raised the issue of unpatentability under § 101.
`
`CBM2014-00204, Papers 2 and 4, page 3. See Statement of Material Facts 13-16.
`
`Likewise, the PRPS system shows that patentability under § 101 was raised in
`
`CBM2014-00204. The only issue is whether Petitioner presented any evidence to
`
`support its previous allegation of unpatentability under 35 U.S.C. § 101. It did not,
`
`so there is no basis for instituting this “second bite at the apple” proceeding, let
`
`alone joining it or coordinating its schedule with a proceeding of at least one
`
`earlier filed Petition.
`
`However, should the Petition be granted in this case and in at least one of
`
`CBM2014-00200 and -00204, Patent Owner respectfully submits that a scheduling
`
`order should be set such that the schedule of the granted Petition in CBM2014-
`
`
`
`- 4 -
`
`
`
`00200 and/or -00204 be coordinated with this case, rather than the other way
`
`around. Such coordination can be implemented either by extending the time
`
`periods of CBM2014-00200 and/or -00204 or by consolidating in CBM2014-
`
`00200 and/or -00204 into the present proceeding. The Decisions on whether or not
`
`to institute the proceedings in CBM2014-00200 and -00204 should be issued no
`
`later than April 6, 2015, and Patent Owner currently has until May 10, 2015 to file
`
`its Preliminary Response in this case. Thus, assuming that the present proceeding
`
`were to be consolidated into CBM2014-00200 and/or -00204, even if the PTAB
`
`issued its Decision in this case a month after the latest date for filing Patent
`
`Owner’s Preliminary Response, the schedule in CBM2014-00200 and -00204
`
`would at most be extended about two months -- still within the additional 6 months
`
`that can be granted by the Chief Administrative Patent Judge for good cause under
`
`42.300(c). Further, if CBM2014-00200 and/or -00204 were to be consolidated into
`
`the present proceeding, then “good cause” would not even need to be shown.
`
`
`
`IV. PETITIONER’S SUGGESTED SHORTENED PERIODS ARE
`UNREASONABLE
`
`Patent Owner opposes the Request for Shortened Response Time for Patent
`
`Owner’s Preliminary Response as the first requested date (February 12, 2015) has
`
`already passed, and the second requested date (February 12, 2015) is in just over a
`
`week. Even if Petitioner’s Motion was granted tomorrow, that would give Patent
`
`
`
`- 5 -
`
`
`
`Owner only a week to respond which would be unreasonable and extremely
`
`prejudicial. Even Notices of Attendance at Oral hearing get 21-day response
`
`periods, and that is just for filling out a form.
`
`Moreover, acts on Petitioner’s part should not create a rush or emergency on
`
`Patent Owner’s part. Petitioner knew of the § 101 issue when it filed its earlier
`
`Petition in CBM2014-00204. In fact, page 3 of the Petition and the Corrected
`
`Petition in CBM2014-00204 both raise the issue. CBM2014-00204, Papers 2 and
`
`4. See Statement of Material Facts 13-16. The only question is whether Petitioner
`
`presented any evidence to support its previous allegation of unpatentability under
`
`35 U.S.C. § 101. It did not.
`
`Presented with Petitioner’s lack of evidence in Patent Owner’s Preliminary
`
`Response in CBM2014-00204, Petitioner filed a Petition in this proceeding along
`
`with the Motion to which this Opposition responds. Petitioner, however, did not
`
`seek a conference call with Patent Owner or the PTAB to discuss possible dates for
`
`responding to outstanding Petition and instead let its Motion sit unaddressed.
`
`Thus, Petitioner’s actions have shown that there is no urgency to the institution of
`
`this proceeding, and Patent Owner should not be forced to respond on an
`
`accelerated schedule of Petitioner’s making.
`
`
`
`
`
` /
`
` Michael R. Casey /
`
`
`Dated: February 18, 2015
`
`
`
`- 6 -
`
`
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson &
`
`Gowdey, LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
`Telephone: (703) 894-6406
`Fax: (703) 894-6430
`Email: mcasey@dbjg.com
`
`
`
`
`
`- 7 -
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that this PATENT OWNER’S
`
`OPPOSITION TO PETITIONER’S MOTION FOR JOINDER UNDER 35 U.S.C.
`
`§ 325(c) AND 37 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 was
`
`served, by as set forth in the Petition, by emailing a copy thereof to counsel for the
`
`Petitioner on February 18, 2015 as follows:
`
`CBM39843-0008CP3@fr.com
`renner@fr.com, and
`rozylowicz@fr.com
`
` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson &
`
`Gowdey, LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
`Telephone: (703) 894-6406
`Fax: (703) 894-6430
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`- 8 -
`
`
`Dated: February 18, 2015
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
