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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SAMSUNG ELECTRONICS AMERICA, INC., and
`SAMSUNG ELECTRONICS CO., LTD.,
`Petitioner,
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`v.
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`SMARTFLASH LLC,
`Patent Owner.
`____________
`
`Case CBM2015-00059
`Patent 8,336,772
`____________
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`REPLY TO PATENT OWNER’S OPPOSITION
`TO MOTION FOR JOINDER
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`CBM2015-00059
`Patent 8,336,772
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`I.
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`Introduction
`In “Patent Owner’s Opposition to Petitioner’s Motion for Joinder Under 35
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`U.S.C. § 325(c) and 37 C.F.R. § 42.222(b) or, in the Alternative, for Coordination
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`of Schedule, and Request for Shortened Response Time for Patent Owner’s
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`Preliminary Response” (“Opposition”), Patent Owner advances various positions
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`that are either unfounded in or contrary to the Board’s precedent. Therefore,
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`Patent Owner’s Opposition provides no basis for denying Petitioner’s Motion for
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`Joinder.
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`II. Petitioner Has Not Challenged Any Claims of the ’772 Patent Under 35
`U.S.C. § 101 in CBM2014-00204
`Patent Owner incorrectly asserts that “Petitioner already raised the issue of
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`unpatentability under § 101.” Opposition, p. 4. In support of this assertion, Patent
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`Owner cites to a table included in the Petition and Corrected Petition in CBM2014-
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`00204, and to a listing of grounds in the Board’s Patent Review Processing System
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`(PRPS). Id. These references to § 101 are clearly clerical errors, and, as they
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`constitute the only Petition references to § 101, the context provided by the
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`Petition reveals that these do not themselves amount to a § 101 challenge, as Patent
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`Owner has led the Board believe.
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`Indeed, as Patent Owner itself notes, the Petition in CBM2014-00204 did
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`not include “any evidence to support” a ground of unpatentability under 35 U.S.C.
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`§ 101. See id. Outside of being listed in a table on page 3, neither the Petitioner
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`CBM2015-00059
`Patent 8,336,772
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`nor the Corrected Petition make any other mention of a challenge under § 101.
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`When facing similar circumstances, the Board has dismissed clerical errors in a
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`Petition’s identification of grounds of unpatentability where, as here, the
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`circumstances make the error unquestionably clear and the Board is notified of the
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`error. See, e.g., ACCO Brands Corp. v. Fellowes, Inc., IPR2013-00566, Paper No.
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`37, p. 3 (P.T.A.B. Feb. 12, 2015) (holding a claim should “not [be] regarded as a
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`challenged claim in this inter partes review proceeding” where Petitioner notified
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`the Board of the claim’s mistaken mention in the petition). Accordingly, the Board
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`should now dismiss Patent Owner’s contention that Petitioner challenged any
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`claims of the ’772 Patent under 35 U.S.C. § 101 in CBM2014-00204.
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`Notably, this is the only argument Patent Owner raises regarding Petitioner’s
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`satisfaction of the factors of joinder set out in Kyocera Corp. v. Softview LLC,
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`IPR2013-00004, Paper 15 at 4 (Apr. 24, 2013). As this argument has been proven
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`moot, the Kyocera factors should be considered met.
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`III. The Schedule of this Proceeding Should Be Altered, Not the Schedule of
`CBM2014-00200 or -00204
`Patent Owner argues that a “scheduling order should be set such that the
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`schedule of the granted Petition in CBM2014-00200 and/or -00204 be coordinated
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`with this case, rather than the other way around.” Opposition, pp. 4-5. However,
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`Patent Owner cites no Board precedent to support its proposal, nor does Patent
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`Owner provide any reason why such a scheduling change should be made in either
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`CBM2015-00059
`Patent 8,336,772
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`of CBM2014-00200 or -00204. Rather, Patent Owner simply notes that “the
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`schedule in CBM2014-00200 and -00204 would at most be extended about two
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`months -- still within the additional 6 months that can be granted by the Chief
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`Administrative Patent Judge for good cause under 42.300(c).” Opposition, p. 5.
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`As Patent Owner correctly identifies, the extraordinary measure of extending
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`a covered business method review beyond its statutorily preferred completion
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`deadline of one year from institution requires the Board to identify “good cause.”
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`35 U.S.C. § 326(a)(11); 37 C.F.R. § 42.300(c). However, Patent Owner makes no
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`attempt to argue that there exists good cause to extend the schedule of either
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`CBM2014-00200 or -00204. See Opposition, pp. 4-5. As no such good cause
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`exists, the Board should dismiss Patent Owner’s request.
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`IV. Even If the Time Period for Patent Owner’s Preliminary Response Is Not
`Altered, Joinder Should Still be Granted
`In its Motion for Joinder, Petitioner requested that the Board specify a
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`shortened response period of February 12th or 26th for Patent Owner’s Preliminary
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`Response. Motion for Joinder, p. 2. As these dates have passed, Petitioner renews
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`its request that the Board specify a shortened preliminary response period.
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`The current deadline by which Patent Owner must file its preliminary
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`response is May 10, 2015, which is more time than should be required for Patent
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`Owner to prepare a preliminary response. As Petitioner previously noted in its
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`Motion for Joinder and Patent Owner admitted in its Opposition, Patent Owner has
`3
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`CBM2015-00059
`Patent 8,336,772
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`already considered a challenge to claims of the ’772 Patent under § 101 in each of
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`CBM2015-00031, -00032, and -00033, which were filed by Apple, Inc. See
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`Motion for Joinder, p. 4; see also Opposition, p. 1 (admitting this fact). Indeed,
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`Patent Owner already filed its preliminary patent owner response in CBM2015-
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`00031, -00032, and -00033 on March 6, 2015. See CBM2015-00031, Paper 8;
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`CBM2015-00032, Paper 8; CBM2015-00033, Paper 8. Therefore, Patent Owner
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`cannot legitimately proclaim prejudice by a shortened period in which to respond
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`to a purely legal issue to which Patent Owner already responded in a co-pending
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`proceeding.
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`In CBM2014-00200 and -00204, Patent Owner filed its preliminary
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`responses on January 6, 2015 and the Board’s subsequent institution decisions and
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`scheduling orders will, thus, be due no later than April 6, 2015, pursuant to 35
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`U.S.C. § 324(c). Accordingly, Petitioner proposes a teleconference between
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`Petitioner, Patent Owner, and the Board to discuss a reasonable shortened deadline
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`for the preliminary response or, alternatively, whether the preliminary response
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`should be waived altogether in light of Patent Owner having already responded to
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`similar issues in its preliminary responses in CBM2015-00031, -00032, and -
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`00033.
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`However, even if the Board does not shorten the time period for Patent
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`Owner’s preliminary response in this proceeding, the Board should still grant
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`CBM2015-00059
`Patent 8,336,772
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`joinder with the trial(s) resulting from institution of CBM2014-00200 and/or -
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`00204. The current period for preliminary response is only one month after the
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`date on which such trial(s) will be instituted. The due date for Patent Owner’s
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`post-institution response(s) in CBM2014-00200 and -00204 can be set so as to
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`permit time for this proceeding to be instituted and joined to CBM2014-00200 and
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`-00204, but without having to extend the overall one year trial schedule of
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`CBM2014-00200 and -00204. To accommodate such a modification, Petitioner
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`would be willing to discuss a reasonably shortened period for its reply to patent
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`owner response in CBM2014-00200 and -00204, in the case where patent owner’s
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`response deadline is extended in order to join CBM2015-00059.
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`V. Conclusion
`As established in this Reply, Patent Owner’s Opposition provides no basis in
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`law or fact for denying Petitioner’s Motion for Joinder. Accordingly, Petitioner
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`respectfully requests the Board join the trial resulting from institution of the
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`petition filed in CBM2015-00059 with the trial(s) resulting from institution of
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`Petitioner’s two previous petitions for CBM review of the ’772 patent in
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`CBM2014-00200 and -00204, or, in the alternative, coordinate the schedules in
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`these proceedings to allow a common oral argument and synchronized Final
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`Written Decisions.
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`CBM2015-00059
`Patent 8,336,772
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`Respectfully submitted,
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`Dated: March 18, 2015
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`/W. Karl Renner/
`W. Karl Renner, Reg. No. 41,265
`Thomas A. Rozylowicz, Reg. No. 50,620
`Attorneys for Petitioner
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`CBM2015-00059
`Patent 8,336,772
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`CERTIFICATE OF SERVICE
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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 March 18, 2015, a complete and entire copy of this Reply to Patent
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`Owner’s Opposition to Motion for Joinder was provided to the Patent Owner by
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`serving the correspondence e-mail addresses of record as follows:
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`Michael R. Casey
`J. Scott Davidson
`Davidson Berquist Jackson & Gowdey, LLP
`4300 Wilson Blvd, Suite 700
`Arlington, VA 22203
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`Email:
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`mcasey@dbjg.com
`docket@dbjg.com
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`Respectfully submitted,
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`/Diana Bradley/
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`Diana Bradley
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(858) 678-5667
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