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)
`
`
`
`
`
`
`____________
`
`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)
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner hereby opposes Petitioner’s Motion for Joinder Under 35
`
`U.S.C. § 325(c) and 37 C.F.R. § 42.222(b).
`
`This is Petitioner’s second Motion for Joinder in this matter. The first
`
`Motion sought to join any proceeding resulting from its CBM2015-00059 petition
`
`with CBM2014-00200 and -00204. Paper 3 at 2. That Motion was rendered moot
`
`when the Patent Trial and Appeal Board (“PTAB”) denied institution of covered
`
`business method review in those two cases. CBM2014-00200, Paper 9, Decision,
`
`Denying Institution of Covered Business Method Patent Review 37 C.F.R. §
`
`42.208, (PTAB March 30, 2015); CBM2014-00204, Paper 9, Decision, Denying
`
`Institution of Covered Business Method Patent Review 37 C.F.R. § 42.208, (PTAB
`
`March 30, 2015).
`
`Now Petitioner seeks to join CBM2015-00059 with covered business
`
`method review cases CBM2015-00031, -00032, and -00033 filed by Apple Inc.
`
`Motion, Paper 11 at 1.
`
`The Board should deny the Motion for Joinder because (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
`
`
`
`- 1 -
`
`
`
`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.
`
`II. RESPONSE TO STATEMENT OF MATERIAL FACTS
`
`1 – 5. Admitted.
`
`6.
`
`Patent Owner admits that “the claims challenged in the Samsung
`
`Petition [in CBM2015-00059] are … a subset of the claims challenged in each
`
`of the three Apple CBM Proceedings [CBM2015-00031, -00032, and -00033].
`
`Patent Owner denies that this “mak[es] it possible to comprehensively join
`
`grounds proposed by Samsung with grounds proposed by Apple.”
`
`7.
`
`Admitted.
`
`III. STATEMENT OF MATERIAL FACTS
`
`1.
`
`2.
`
`There has been no Institution Decision issued in CBM2015-00059.
`
`Under Petitioner’s Proposal for Schedule with Joinder (Motion for
`
`Joinder, Paper 11 at 14), the proposed date for Patent Owner’s Response to
`
`Samsung’s Petition in CBM2015-00059 is July 29, 2015, the date this
`
`Opposition is due.
`
`3.
`
`There is no overlap in witnesses proffered by Samsung in CBM2015-
`
`00059 (Dr. Jeffery Bloom and Mr. Steven Blumenfeld) with witnesses
`
`
`
`- 2 -
`
`
`
`proffered by Apple in CBM2015-00031, -00032, and -00033 (Mr. Anthony J.
`
`Wechselberger).
`
`4.
`
`In support of its §101 petition, Samsung relies on Exhibits 1039-
`
`1047. Those Exhibits are not in CBM2015-00031, -00032, and -00033.
`
`5.
`
`Petitioner Samsung already sought review of claims 5, 10, 14, 26, and
`
`32 on § 101 grounds in CBM2014-00204.
`
`6.
`
`The PTAB did not institute review of claims 5, 10, 14, 26, and 32 on §
`
`101 grounds in CBM2014-00204.
`
`IV. ARGUMENT
`
`A.
`
`It Is Too Late For The Proposed Joinder To Provide The
`Purported Efficiencies Petitioner Suggests.
`
`Petitioner claims that “[j]oinder is appropriate because … it will promote
`
`efficient resolution of the validity of the ‘772 Patent.” Motion, Paper 11 at 1. Any
`
`efficiencies that might have existed at the time the CBM2015-00031, -00032, and -
`
`00033 were instituted on May 28, 2015, however, were squandered by Petitioner
`
`waiting until the very last allowable day (June 29, 2015) to file its Motion for
`
`Joinder. In the meantime, CBM2015-00031, -00032, and -00033 have proceeded
`
`through Patent Owner discovery to the point of Patent Owner’s Response being
`
`filed on July 29, 2015. Meanwhile, CBM2015-00059 has not had a decision on
`
`institution.
`
`
`
`- 3 -
`
`
`
`Petitioner Samsung posits that “[b]ecause grounds of unpatentability under §
`
`101 are directed to legal issues, there is necessarily less discovery involved than
`
`would normally be involved with regard to grounds of unpatentability under §§
`
`102 and 103, which are directed to a larger factual inquiry.” Motion, Paper 11 at 9.
`
`While this is true in theory, it is belied by the fact that Samsung’s petition, limited
`
`only to the § 101 issue, is 66 pages, includes 65 Exhibits, and has supporting
`
`declarations from two witnesses. If CBM2015-00059 is instituted, there is a need
`
`for Patent Owner discovery.
`
`Moreover, Petitioner’s proposed schedule is impractical. Under Petitioner’s
`
`Proposal for Schedule with Joinder (Motion for Joinder, Paper 11 at 14), the
`
`proposed date for Patent Owner’s Response to Samsung’s Petition in CBM2015-
`
`00059 is July 29, 2015, the date this Opposition is due. While Samsung proposes
`
`“reasonable accommodations” of providing “additional supplemental responses
`
`addressing peculiarities of the Samsung Petition” to be filed August 12, 2015, that
`
`is impractical. As noted, there has been no institution decision and thus no
`
`discovery conducted by Patent Owner. Also as noted, Samsung proffered two
`
`witness declarations from Dr. Jeffery Bloom and Mr. Steven Blumenfeld. These
`
`witnesses do not overlap with Apple’s witnesses. Patent Owner has a right to
`
`depose these witnesses. 37 CFR § 42.53. Clearly Samsung’s “reasonable
`
`
`
`- 4 -
`
`
`
`accommodations” whereby Patent Owner would depose two witnesses and prepare
`
`a substantive Patent Owner’s Response by August 12, 2015 are not so reasonable.1
`
`CBM2015-00031, -00032, and -00033 are too far advanced to shoe horn
`
`CBM2015-00059 into the same schedule.
`
`B. The CBM2015-00059 and CBM2015-00031, -00032, and -
`00033 Cases Are Sufficiently Different Such That There Is No
`Advantage To Joinder.
`
`In arguing for joinder, Samsung focuses on purported “commonalities”
`
`between its petition and the Apple petitions. Motion, Paper 11 at 5-6. These
`
`“commonalities” are superficial: same patent, same § 101 grounds. The
`
`CBM2015-00059 and CBM2015-00031, -00032, and -00033 petitions are
`
`sufficiently different in terms of proffered exhibits and witnesses that they will not
`
`gain any advantage by joinder.
`
`In support of its §101 petition, Samsung relies on Exhibits 1039-1047, all
`
`generally related to compensation of copyright holders based on the number of
`
`
`1 Meanwhile, in CBM2015-00125, Petitioner Google is proposing that its petition
`
`be joined with CBM2015-00028 and -00029 (which are proceeding in lockstep
`
`with CBM2015-00031, -00032, and -00033) and proffered a schedule whereby
`
`Patent Owner would depose Google’s witness and prepare a substantive Patent
`
`Owner’s Response by August 28, 2015. CBM2015-00125, Motion for Joinder,
`
`Paper 7 at 13-14.
`
`
`
`- 5 -
`
`
`
`purchases and/or plays of their songs. Those Exhibits are not in CBM2015-00031,
`
`-00032, and -00033.
`
`There is no overlap in witnesses proffered by Samsung in this action (Dr.
`
`Jeffery Bloom and Mr. Steven Blumenfeld) with witnesses proffered by Apple in
`
`CBM2015-00031, -00032, and -00033 (Mr. Anthony J. Wechselberger).
`
`Joinder would force Patent Owner to respond to different sets of evidence
`
`simultaneously, on a compressed schedule, and in more limited space. The
`
`prejudice to Patent Owner is obvious.
`
`In light of the differences in evidence between the actions, there is no real
`
`advantage to the parties or the PTAB from joinder.
`
`C. The Board Should Exercise Its Discretion Under 35 U.S.C. §
`325(d) And Decline To Institute Covered Business Method
`Patent Review.
`
`To meet Petitioner Samsung’s stated goal of “facilitat[ing] the efficient
`
`adjudication of all proceedings” and “promot[ing] an efficient and holistic
`
`adjudication of the proceedings” (Motion, Paper 11 at 6), Patent Owner submits
`
`that the Board should follow its precedent from other Smartflash/Apple/Samsung
`
`CBM proceedings and deny Samsung’s petition. See, Apple Inc. v, Smartflash
`
`LLC, CBM2015-00015, Paper 23 at 18, Decision, Institution of Covered Business
`
`Method Patent Review and Denying Motion for Joinder 37 C.F.R. § 42.208 37
`
`C.F.R. § 42.222(b), (PTAB April 10, 2015)(declining to institute covered business
`
`
`
`- 6 -
`
`
`
`method patent review of claims under §101, an issue of law, because Board already
`
`instituted covered business method review of same claims under § 101 in other
`
`proceeding).
`
`Here, 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 on 35 U.S.C. § 101 grounds in CBM2015-00059 because it has already
`
`instituted covered business method review of those same claims on the same
`
`purely legal § 101 grounds in CBM2015-00031, -00032, and -00033.
`
`This result is also appropriate because Petitioner Samsung already sought
`
`review of claims 5, 10, 14, 26, and 32 on § 101 grounds in CBM2014-00204 and
`
`the Board declined to institute review of claims 5, 10, 14, 26, and 32 on § 101
`
`grounds in CBM2014-00204.
`
`
`
`
`
`
`
`- 7 -
`
`
`
`
`
`V. CONCLUSION
`
`Petitioner’s Motion for Joinder Under 35 U.S.C. § 325(c) and 37 C.F.R. §
`
` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Fax : (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`
`- 8 -
`
`42.222(b) should be denied.
`
`
`Dated: July 29, 2015
`
`
`
`
`
`
`
`
`
`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) was served, by agreement of the parties, July
`
`29, 2015 by emailing copies to counsel for the Petitioner as follows:
`
`W. Karl Renner (renner@fr.com)
`Thomas Rozylowicz (rozylowicz@fr.com)
`CBM39843-0008CP3@fr.com
`
`
` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Dr., Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7700
`Fax : (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`- 9 -
`
`
`
`Dated: July 29, 2015
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