Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 11
`Entered: August 6, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`____________
`
`Case CBM2015-00119
`Patent 8,033,458 B2
`____________
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review and Grant of Motion
`for Joinder
`37 C.F.R. § 42.208
`37 C.F.R. § 42.222(b)
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 11
`Entered: August 6, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`____________
`
`Case CBM2015-00119
`Patent 8,033,458 B2
`____________
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`PLENZLER, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Covered Business Method Patent Review and Grant of Motion
`for Joinder
`37 C.F.R. § 42.208
`37 C.F.R. § 42.222(b)
`
`
`
`
`
`
`
`
`CBM2015-00119
`Patent 8,033,458 B2
`
`
`I. INTRODUCTION
`
`Petitioner, Apple Inc. (“Apple”), filed a Petition requesting covered
`
`business method patent review of claim 11 (the “challenged claim”) of U.S.
`
`Patent No. 8,033,458 (Ex. 1001, “the ’458 patent”) (Paper 2, “Pet.”). On
`
`June 1, 2015, Patent Owner, Smartflash LLC (“Smartflash”), filed a
`
`Preliminary Response (Paper 7, “Prelim. Resp.”).
`
`We have jurisdiction under 35 U.S.C. § 324, which provides that a
`
`covered business method patent review may not be instituted “unless . . . it is
`
`more likely than not that at least 1 of the claims challenged in the petition is
`
`unpatentable.”
`
`Concurrently with its Petition, Apple filed a Motion for Joinder (Paper
`
`3, “Mot.”), seeking to consolidate this case, under 35 U.S.C. § 325(c), with
`
`the covered business method patent review in Samsung Electronics America,
`
`Inc. and Samsung Electronics Co., Ltd. v. Smartflash, LLC, Case CBM2014-
`
`00192 (“the Samsung CBM”), which was instituted on April 2, 2015. See
`
`CBM2014-00192 (Paper 7, 19) (instituting review of claim 11 of the ’458
`
`patent under 35 U.S.C. § 101). Smartflash does not oppose Apple’s Motion
`
`for Joinder. Paper 10, 1.
`
`For the reasons explained below, we institute covered business
`
`method patent review of claim 11 of the ’458 patent and grant Apple’s
`
`Motion for Joinder.
`
`II. INSTITUTION OF COVERED BUSINESS METHOD PATENT
`REVIEW ON SAME GROUND ASSERTED IN THE SAMSUNG
`CBM
`
`In view of the identity of the challenge in the instant Petition and that
`
`instituted in CBM2014-00192, we determine that it is more likely than not
`
`2
`
`
`
`CBM2015-00119
`Patent 8,033,458 B2
`
`that Petitioner will prevail on its challenge that claim 11 of the ’458 patent is
`
`unpatentable. We previously have determined that the ’458 patent is a
`
`“covered business method patent.” AIA § 18(d)(1); see 37 C.F.R.
`
`§ 42.301(a); see also CBM2014-00192, Paper 7, 7–12 (determining that the
`
`’458 patent is eligible for covered business method patent review based on
`
`claim 11); CBM2014-00106, Paper 8, 9–13 (determining that the ’458 patent
`
`is eligible for covered business method patent review based on claim 1);
`
`CBM2015-00016, Paper 23, 12–16 (determining that the ’458 patent is
`
`eligible for covered business method patent review based on claim 1).
`
`Smartflash argues that “Petitioner has cited claim 11 as being the
`
`basis for requesting that a covered business method review be instituted,”
`
`but “claim 11 does not, in fact, meet the requirements for instituting a
`
`review.” Prelim. Resp. 8. As noted above, however, the ’458 patent already
`
`has been determined to be a covered business method patent based on claim
`
`11, and Smartflash fails to identify error in that determination. Further, as
`
`also noted above, we previously have determined that the ’458 patent
`
`contains at least one other claim meeting the covered business method patent
`
`review requirements (e.g., claim 1). See Transitional Program for Covered
`
`Business Method Patents—Definitions of Covered Business Method Patent
`
`and Technological Invention; Final Rule, 77 Fed. Reg. 48,734, 48,736 (Aug.
`
`14, 2012) (“CBM Rules”) (Comment 8) (a patent need have only one claim
`
`directed to a covered business method to be eligible for review).
`
`Here, Apple challenges the same claim (claim 11), based upon the
`
`same ground, 35 U.S.C. § 101, for which covered business method patent
`
`review was instituted in the Samsung CBM. Pet 14–31; Mot. 8–9. We have
`
`reviewed the Preliminary Response presented by Smartflash and are not
`
`3
`
`
`
`CBM2015-00119
`Patent 8,033,458 B2
`
`persuaded that we should deny institution in this proceeding. In its
`
`Preliminary Response, Smartflash does not attempt to rebut Apple’s
`
`contentions regarding the unpatentability of claim 11 under 35 U.S.C. § 101.
`
`Rather, Smartflash argues that the Petition should be denied because it
`
`“disregards the Board’s exercise of discretion in CBM2015-00016” (Prelim.
`
`Resp. 4) and “would be contrary to the PTAB’s mandate” of securing the
`
`just, speedy, and inexpensive resolution of every proceeding (id. at 5).
`
`These arguments are not persuasive.
`
`As Apple notes (Mot. 7–8), we declined to institute CBM review of
`
`claim 11 in CBM2015-00016 because we had already instituted review of
`
`that claim on § 101 grounds in the Samsung CBM (CBM2015-00016, Paper
`
`23, 20). In its Motion for Joinder, Apple requests that it
`
`be permitted to join these proceedings to ensure that, even if
`Samsung should seek to terminate its involvement in
`CBM2014-00192 (e.g., as a result of settlement), Apple would
`be able to see the § 101 challenge to claim 11 through to a final
`written decision, since it was not permitted to do so in
`CBM2015-00016.
`
`Mot. 8. Apple notes that in this proceeding, the “petition does not assert any
`
`new grounds of unpatentability. It involves the same ’458 patent and—as
`
`discussed above—the same arguments, evidence and grounds of
`
`unpatentability as the Board instituted in CBM2014-00192.” Id. Apple
`
`further notes that it has “re-filed the same expert declaration submitted by
`
`Samsung, and so this declaration contains no material that is not already in
`
`the previously-filed declaration” and “a second deposition of a second expert
`
`is not necessary.” Id. at 9.
`
`Based on the specific facts of this case, we institute a covered
`
`business method patent review in this proceeding on the same ground,
`
`4
`
`
`
`CBM2015-00119
`Patent 8,033,458 B2
`
`namely under 35 U.S.C. § 101, as that on which we instituted in the
`
`Samsung CBM for claim 11 of the ’458 patent. We do not institute a
`
`covered business method patent review on any other ground.
`
`III. GRANT OF MOTION FOR JOINDER
`
`As noted above, Smartflash does not oppose Apple’s request to
`
`consolidate this Petition with the Samsung CBM. Paper 10, 1.
`
`As noted above, the only ground upon which we institute a covered
`
`business method patent review in this proceeding is the challenge to claim
`
`11 of the ’458 patent based on 35 U.S.C. § 101. Apple, thus, does not assert
`
`any new ground of unpatentability that is not already being considered in the
`
`Samsung CBM. Mot. 8. Further, as noted above, Apple represents that the
`
`Petition includes the same arguments and relies on the same evidence and
`
`grounds of unpatentability that were the basis for the Board’s decision to
`
`institute trial in the Samsung CBM. Id. at 8–9.
`
`Under the circumstances, we conclude Apple has demonstrated that
`
`consolidation of the two cases will not unduly complicate or delay the
`
`Samsung CBM, and therefore, we grant Apple’s Motion for Joinder to
`
`consolidate this proceeding with the Samsung CBM. All filings in the
`
`consolidated proceeding will be made by Samsung Electronics America,
`
`Inc., and Samsung Electronics Co., Ltd. (“Samsung”) on behalf of Samsung
`
`and Apple. Apple shall not file any separate papers or briefing in these
`
`consolidated proceedings without authorization from the Board. In addition,
`
`Apple shall not seek any additional discovery beyond that sought by
`
`Samsung.
`
`Samsung and Apple shall resolve any disputes between them
`
`concerning the conduct of the consolidated proceedings and contact the
`
`5
`
`
`
`CBM2015-00119
`Patent 8,033,458 B2
`
`Board if any such matters cannot be resolved. No additional burdens shall
`
`be placed on Smartflash as a result of the consolidation.
`
`In consideration of the above, we institute a covered business method
`
`patent review in CBM2015-00119 and grant Apple’s Motion for Joinder.
`
`Accordingly, it is
`
`IV. ORDER
`
`ORDERED that the challenge to claim 11 in CBM2015-00119, as
`
`unpatentable under 35 U.S.C. § 101, is instituted;
`
`FURTHER ORDERED that this proceeding is consolidated with
`
`CBM2014-00192;
`
`FURTHER ORDERED that the ground on which CBM2014-00192
`
`was instituted is unchanged, and no other grounds are instituted in the
`
`consolidated proceeding;
`
`FURTHER ORDERED that the Scheduling Order in place for
`
`CBM2014-00192 shall govern the consolidated proceeding;
`
`FURTHER ORDERED that, throughout the consolidated proceeding,
`
`any paper, except for a motion that does not involve the other party, shall be
`
`filed by Samsung as a single, consolidated filing on behalf of Samsung and
`
`Apple, and Samsung will identify each such filing as a consolidated filing;
`
`FURTHER ORDERED that except as otherwise agreed by counsel,
`
`Samsung will conduct cross-examination and other discovery on behalf of
`
`Samsung and Apple, and that Smartflash is not required to provide separate
`
`discovery responses or additional deposition time as a result of the
`
`consolidation;
`
`6
`
`
`
`CBM2015-00119
`Patent 8,033,458 B2
`
`
`FURTHER ORDERED that CBM2015-00119 is terminated under
`
`37 C.F.R. § 42.72, and all further filings in the consolidated proceeding are
`
`to be made in CBM2014-00192;
`
`FURTHER ORDERED that a copy of this Decision will be entered
`
`into the record of CBM2014-00192 and CBM2015-00119; and
`
`FURTHER ORDERED that the case caption in CBM2014-00192
`
`shall be changed to reflect consolidation with this proceeding in accordance
`
`with the attached example.
`
`
`
`7
`
`
`
`8
`
`CBM2015-00119
`Patent 8,033,458 B2
`
`
`
`
`FOR PETITIONER:
`
`
`FOR PATENT OWNER:
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`SAMSUNG ELECTRONICS LTD, SAMSUNG ELECTRONICS
`AMERICA, INC., and APPLE INC.
`Petitioner,
`
`v.
`
`SMARTFLASH LLC
`Patent Owner.
`____________
`
`Case CBM2014-001921
`Patent 8,033,458 B2
`____________
`
`
`
`
`
`
`
`
`
`
`
`
`1 CBM2015-00119 has been consolidated with this proceeding.
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