IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In re Patent of:
`U.S. Patent No.:
`Issue Date:
`Appl. Serial No.:
`Filing Date:
`Title:
`
`Attorney Docket No.: 104677-5008-828
`
`Racz et al.
`8,061,598
`November 22, 2011
`13/012,541
`
`January 24, 2011
`DATA STORAGE AND ACCESS SYSTEMS
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`MOTION FOR JOINDER
`UNDER 35 U.S.C. § 325(c) AND 37 C.F.R. §§ 42.22 AND 42.222(b) AND
`REQUEST FOR SHORTENED RESPONSE TIME FOR
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`In re Patent of:
`U.S. Patent No.:
`Issue Date:
`Appl. Serial No.:
`Filing Date:
`Title:
`
`Attorney Docket No.: 104677-5008-828
`
`Racz et al.
`8,061,598
`November 22, 2011
`13/012,541
`
`January 24, 2011
`DATA STORAGE AND ACCESS SYSTEMS
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`MOTION FOR JOINDER
`UNDER 35 U.S.C. § 325(c) AND 37 C.F.R. §§ 42.22 AND 42.222(b) AND
`REQUEST FOR SHORTENED RESPONSE TIME FOR
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`
`
`
`
`
`
`
`
`Attorney Docket No 104677-5008-828
`CBM of U.S. Patent No. 8,061,598 B2
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`I.
`
`Apple Inc. (“Petitioner” or “Apple”) respectfully requests joinder pursuant to
`
`35 U.S.C. § 325(c) and 37 C.F.R. § 42.222(b) of the concurrently filed Petition for
`
`Covered Business Method Review of U.S. Patent No. 8,061,598 (“the ’598 Patent”)
`
`(“Apple Petition”) with pending Covered Business Method review, CBM2014-00193
`
`(“Samsung CBM”), which was instituted by the Board on April 2, 2015. CBM2014-
`
`00193, Pap. 7.
`
`Joinder is appropriate because it will promote efficient resolution of the validity
`
`of the ’598 Patent, as the timely Apple Petition involves the same ’598 patent, same
`
`claim at issue, and same § 101 grounds instituted in the Samsung CBM, while relying
`
`on the same arguments and evidentiary record.1 No new grounds of unpatentability
`
`are asserted in the petition, and there will be at most a minimal impact on the trial
`
`schedule for the existing review; further, Apple identifies in Section III.D, below,
`
`procedures the Board may adopt to simplify briefing and discovery. Notably, while
`
`Apple previously filed a petition directed at the same claim on § 101 grounds, Apple’s
`
`petition was not instituted on the claim challenged here because the Board had already
`
`instituted Samsung’s CBM the week before. Apple thus seeks to join the Samsung
`
`proceedings so that, if necessary, Apple can ensure that the proceedings on this claim
`
`
`1 Apple’s Exhibits are identical to their corresponding Samsung Exhibits, but have
`
`been re-stamped as “Apple” exhibits.
`
`
`
`
`-2-
`
`
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`Attorney Docket No 104677-5008-828
`CBM of U.S. Patent No. 8,061,598 B2
`continues in the event Samsung seeks to terminate them based on settlement or other
`
`factors.
`
` In conjunction with this request for joinder, Petitioner respectfully requests
`
`that, to the extent Patent Owner Smartflash LLC (“Smartflash” or “Patent Owner”)
`
`determines to file a Preliminary Response despite the fact that the Apple Petition
`
`presents identical arguments, the Board specify a shortened response period of at
`
`most two (2) weeks (to May 14, 2015) . Petitioner has also requested a call with the
`
`Board to discuss scheduling for these proceedings, including the time for briefing on
`
`this Motion.
`
`Petitioner also informed counsel for Patent Owner of its intent to seek joinder,
`
`and Patent Owner has indicated that it opposes.
`
`II. STATEMENT OF MATERIAL FACTS
`
`A. On September 26, 2014, petitioners Samsung Electronics America, Inc.,
`
`Samsung Electronics Co., Ltd., and Samsung Telecommunications America,
`
`LLC (“Samsung”) requested Covered Business Method review of claim 7 of the
`
`’598 patent under two grounds of unpatentability. CBM2014-00193, Pap. 2.
`
`B.
`
`The Patent Owner, listed as Smartflash LLC (“Smartflash” or “Patent
`
`Owner”), submitted a Preliminary Response on January 6, 2015. CBM2014-
`
`00193, Pap. 5.
`
`C.
`
`In a decision dated April 2, 2015, the Board instituted Covered Business
`
`Method review on one of the two requested grounds, i.e., that Claim 11 is
`
`
`
`
`-3-
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`
`
`Attorney Docket No 104677-5008-828
`CBM of U.S. Patent No. 8,061,598 B2
`directed to patent ineligible subject matter under 35 U.S.C. § 101. CBM2014-
`
`00193, Pap. 7.
`
`D. Apple’s own earlier petition for review of Claim 7 on § 101 grounds—
`
`although granted on other claims—was denied as to Claim 7 on April 10, 2015
`
`in light of the institution of trial on that claim in CBM2014-00193. See
`
`CBM2015-00017, Pap. 22, at 16.
`
`E.
`
`The Apple Petition that accompanies the present Motion for Joinder was
`
`filed within 20 days of the decision noted above in CBM2015-00017, and
`
`includes only this same ground of unpatentability that was instituted in the
`
`Samsung CBM for the ’598 patent (CBM2014-00193).
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`The Leahy-Smith America Invents Act (“AIA”) permits joinder of Covered
`
`Business Method review (“CBM”) proceedings. The statutory provision governing
`
`joinder of post-grant review proceedings (applicable to CBMs under AIA § 18(a)(1)) is
`
`35 U.S.C. § 325(c), which reads as follows:
`
`(c) JOINDER.-- If more than 1 petition for a post-grant
`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 review.
`
`
`
`
`-4-
`
`
`
`Attorney Docket No 104677-5008-828
`CBM of U.S. Patent No. 8,061,598 B2
`37 C.F.R. § 42.222(a) provides that, “[w]here another matter involving the
`
`patent is before the Office, the Board may during the pendency of the post-grant
`
`review enter any appropriate order regarding the additional matter including providing
`
`for the stay, transfer, consolidation, or termination of any such matter.” “The Board
`
`will determine whether to grant joinder on a case-by-case basis, taking into account
`
`the particular facts of each case, substantive and procedural issues, and other
`
`considerations.” IPR2013-00385, Pap. 17 at 3 (citing 157 CONG. REC. S1376 (daily
`
`ed. Mar. 8, 2011) (statement of Sen. Kyl)). “The Board’s rules for AIA proceedings
`
`‘shall be construed to secure the just, speedy, and inexpensive resolution of every
`
`proceeding.’” CBM2014-00115, Pap. 8 at 19 (citing 37 C.F.R. § 42.1(b); 77 Fed. Reg.
`
`at 48,758). And the Board should “also take into account the policy preference for
`
`joining a party that does not present new issues that might complicate or delay an
`
`existing proceeding.” See IPR2013-00385, Pap. 17 at 10 (citing 157 CONG. REC.
`
`S1376 (daily ed. Mar. 8, 2011) (statement of Sen. Kyl) (“[Sections 315(c) and 325(c)
`
`allow joinder of inter partes and post-grant reviews.] The Office anticipates that
`
`joinder will be allowed as of right – if an inter partes review is instituted on the basis
`
`of a petition, for example, a party that files an identical petition will be joined to that
`
`proceeding, and thus allowed to file its own briefs and make its own arguments.”)
`
`(emphasis added)).
`
`The Board has identified a Representative Order, IPR2013-0004 Paper 15,
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`regarding motions for joinder, which directs a movant to: (1) “explain the reasons
`
`
`
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`-5-
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`
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`Attorney Docket No 104677-5008-828
`CBM of U.S. Patent No. 8,061,598 B2
`why joinder is appropriate,” (2) “identify any new ground of unpatentability being
`
`raised” in the petition, (3) explain how the impact on the schedule and costs of the
`
`current proceedings will be minimized, and (4) “specifically address how briefing
`
`and/or discovery may be simplified to minimize schedule impact.” IPR2013-0004,
`
`Pap. 15 at 4. These factors are addressed below and all point to granting the instant
`
`motion.
`
`A. Joinder Is Appropriate
`The Board has authority to join a properly-filed CBM petition to an instituted
`
`CBM proceeding. See 35 U.S.C. § 325(c). Petitioner submits that the Apple Petition
`
`and concurrently filed Motion for Joinder are timely under 35 U.S.C. § 325(c) and 37
`
`C.F.R. §§ 42.22 and 42.222(b). 37 C.F.R. § 42.222 states that a motion for joinder is
`
`to be filed “no later than one month after the institution date of any post-grant review
`
`for which joinder is requested.” CBM2014-00193 was instituted on April 2, 2015.
`
`CBM2014-00193, Pap. 7. The Petitioner filed the Apple Petition concurrently with
`
`this Motion for Joinder on April 30, 2015, which is no later than one month from the
`
`institution of CBM2014-00193.
`
`Further, joinder is appropriate as the Apple Petition involves the same ’598
`
`patent with the same claim at issue and challenged on the same instituted ground with
`
`the same arguments raised by Samsung. Accordingly, the Apple Petition does not
`
`raise new grounds of unpatentability not already authorized in the institution decision
`
`of CBM2014-00193. In addition, Apple re-filed the same declaration from the same
`
`
`
`
`-6-
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`
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`Attorney Docket No 104677-5008-828
`CBM of U.S. Patent No. 8,061,598 B2
`declarant as in the Samsung CBM petition, Dr. Jeffrey Bloom. The only substantive
`
`differences in Apple’s Petition are that portions regarding prior art references on
`
`which a trial was not instituted in the Samsung CBM petition have been removed,
`
`discussions regarding claim construction now reflect the Board’s claim constructions
`
`in its institution decision in CBM2014-00193,2 and the sections on Real Party-In-
`
`Interest, Related Matters, and Counsel have been appropriately updated. Based on
`
`the substantial identity of the Apple Petition with the Samsung Petition, the
`
`arguments and evidence present no new issues that would complicate or delay the
`
`proceeding.
`
`Furthermore, Apple seeks joinder based only on the instituted grounds. Apple
`
`previously sought Covered Business Method review of claims 1, 2, 7, 15, and 31 of
`
`the ’598 Patent on §101 grounds in CBM2015-00017. There, the Board agreed that
`
`Apple “demonstrated that it is more likely than not that the challenged claims are
`
`unpatentable under 35 U.S.C. § 101,” but declined to institute CBM review of claim 7
`
`because CBM2014-00193 had already instituted review of that claim on § 101
`
`grounds. See CBM2015-00017 (Pap. 22) at 16. In light of that denial, less than three
`
`
`2 As noted in Apple’s Petition, Apple submits that, under these circumstances and the
`
`broadest reasonable interpretation standard applicable in this review, it would be
`
`appropriate for the Patent Trial and Appeal Board (“PTAB”) to adopt the
`
`constructions that it set forth in its institution decision in CBM2014-00193.
`
`
`
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`-7-
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`
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`Attorney Docket No 104677-5008-828
`CBM of U.S. Patent No. 8,061,598 B2
`weeks ago, Apple should be permitted to join these proceedings to ensure that, even if
`
`Samsung should seek to terminate its involvement in CBM2014-00193 (e.g., as a result
`
`of settlement), Apple would be able to see the § 101 challenge to claim 7 through to a
`
`final written decision, since it was not permitted to do so in CBM2015-00017.
`
`For all of the aforementioned reasons, joinder is appropriate.
`
`B. No New Grounds of Unpatentability Are Asserted In the Petition
`The Apple petition does not assert any new grounds of unpatentability. It
`
`involves the same ’598 patent and—as discussed above—the same arguments,
`
`evidence and grounds of unpatentability as the Board instituted in CBM2014-00193.
`
`Although it otherwise presents the same arguments as the Samsung Petition, the
`
`Apple Petition here removes grounds on which the Board did not institute in
`
`CBM2014-00193, and Apple does not assert those grounds in its concurrently filed
`
`petition.
`
`C. Joinder Will Have At Most a Minimal Impact On the Trial Schedule And
`Costs For the Existing Review
`
`Joinder will have minimal impact on the trial schedule and costs for the existing
`
`review. Here, joinder need not materially affect the schedule and will minimize costs
`
`because Petitioner does not raise any issues that are not already before the Board.
`
`Indeed, the Petition includes only those grounds on which the Samsung CBM was
`
`instituted, and the invalidity grounds were essentially copied verbatim from the
`
`Samsung CBM petition. Because the claim is challenged on § 101 grounds—a legal
`
`
`
`
`-8-
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`
`
`Attorney Docket No 104677-5008-828
`CBM of U.S. Patent No. 8,061,598 B2
`inquiry—and the same record, there will not be a need for additional factual findings
`
`or discovery based on joinder of an additional party. As noted above, Apple 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.
`
`Accordingly, a second deposition of a second expert is not necessary. Also, the
`
`specific procedures detailed below to simplify briefing and discovery should help
`
`avoid any impact on the trial schedule and minimize costs. As noted above, Petitioner
`
`has also requested a call with the Board to discuss scheduling for these proceedings,
`
`and would propose a common schedule. In particular, because this Petition raises
`
`identical issues, Patent Owner may not require a Preliminary Response, and even if
`
`one is filed, Apple respectfully submits that the Board may be in a position to decide
`
`again the same question of institution within a few weeks, likely before the current
`
`Due Date 1 for Patent Owner’s Response in the CBM2014-00193 matter. To the
`
`extent this may not be practical, and to the extent Patent Owner deems it necessary
`
`despite the identity of arguments and evidence, Apple would agree that Patent Owner
`
`may file an additional seven-page supplemental Response addressing the Apple
`
`Petition one week after current Due Date 1, on June 8, 2015. The remainder of the
`
`existing schedule could then remain unchanged, as outlined in the attached
`
`Petitioner’s Proposed Schedule. Alternatively, Apple is amenable, in coordination
`
`with Samsung and Patent Owner, to other arrangements the Board deems
`
`appropriate.
`
`
`
`
`-9-
`
`
`
`Attorney Docket No 104677-5008-828
`CBM of U.S. Patent No. 8,061,598 B2
`Accordingly, this factor also points in favor of joinder.
`
`D. Procedures to Simplify Briefing and Discovery
`Given that Petitioner Apple will be addressing identical grounds for an identical
`
`claim, the Board may adopt procedures similar to those adopted in IPR2013-00256
`
`and IPR2013-00385. In those cases, the Board ordered the petitioners to file
`
`consolidated filings, for which the first set of petitioners (here, Samsung) were
`
`responsible, and allowed the new petitioner (here, Apple) to file separate filings, if any,
`
`of no more than seven pages directed only to points of disagreement with the other
`
`petitioners. IPR2013-00385, Pap. 17 at 8; IPR2013-00256, Pap. 10 at 8-9. The Board
`
`also allowed the Patent Owner a corresponding number of pages to respond to any
`
`separate filings. Id. The Board recognized that this procedure would minimize any
`
`complication or delay caused by joinder, while providing the parties an opportunity to
`
`address all issues that may arise. Apple agrees to such procedures in the present case.
`
`In addition, Apple agrees to coordinate and work together with Samsung to
`
`manage the time normally allotted and to avoid redundancy. See IPR2013-00385,
`
`Paper 17 at 9; IPR2013-00256, Paper 10 at 9-10. Furthermore, Apple agrees that
`
`Samsung will be permitted to ask questions before Apple at any deposition and
`
`present argument before Apple at any oral argument if Samsung so chooses. See
`
`IPR2013-00385, Paper 17 at 9. Further, if the parties are unable to reach agreement,
`
`Apple will request a conference call. Id. Consequently, these procedures will help
`
`minimize any prejudice or burden on the parties based on joinder.
`
`
`
`
`-10-
`
`
`
`Attorney Docket No 104677-5008-828
`CBM of U.S. Patent No. 8,061,598 B2
`E. Request for Shortened Preliminary Response Period
`Petitioner respectfully requests that the Board specify a shortened response
`
`period of at most two (2) weeks (to May 14, 2015) for Patent Owner to file a
`
`Preliminary Response to the Petition, to the extent it determines such a Response is
`
`necessary. Patent Owner and its counsel are already quite familiar with the patent and
`
`claim at issue, as well as the specific ground of unpatentability at issue here. Patent
`
`Owner has already provided a Preliminary Response in CBM2014-00193, and there
`
`has already briefed, for example, the threshold question of whether the patent at issue
`
`qualifies for a CBM review, and also included argument responding to the § 101
`
`grounds on which institution was ultimately granted. Given the common issues
`
`already raised in each proceeding, this will not cause undue prejudice, and will increase
`
`the efficiencies for the parties and the Board. Since this Petition involves identical
`
`issues, Apple respectfully submits the Board may be in a position to resolve this same
`
`question of institution approximately two weeks after the Patent Owner’s Preliminary
`
`Response, should Patent Owner choose to submit one.
`
`IV. Conclusion
`
`For the foregoing reasons, Petitioner respectfully requests that its Petition for
`
`Covered Business Method Review of U.S. Patent No. 8,061,598 be granted, and that
`
`the Board grant this Motion for Joinder to join this proceeding with CBM2014-00193
`
`and for a shortened period of at most two (2) weeks (to May 14, 2015) for a Patent
`
`
`
`
`-11-
`
`
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`Attorney Docket No 104677-5008-828
`CBM of U.S. Patent No. 8,061,598 B2
`Owner Preliminary Response, together with an accelerated schedule for briefing on
`
`Respectfully submitted,
`
`By: /J. Steven Baughman/
`J. Steven Baughman, Lead Counsel
`Reg No. 47,414
`ROPES & GRAY LLP
`One Metro Center
`700 12th Street NW, Suite 900
`Washington, DC 20005-3948
`steven.baughman@ropesgray.com
`
`Mailing address for all PTAB
`correspondence:
`ROPES & GRAY LLP,
`IPRM – Floor 43
`Prudential Tower
`800 Boylston Street
`Boston, MA 02199-3600
`
`Attorneys for Petitioner, Apple Inc.
`
`
`
`-12-
`
`this Motion.
`
`
`
`Dated: April 30, 2015
`
`
`
`
`
`
`
`
`
`
`Attorney Docket No 104677-5008-828
`CBM of U.S. Patent No. 8,061,598 B2
`
`PETITIONER’S PROPOSED SCHEDULE
`
`Current Schedule in
`CBM2014-00193
`(See Pap. 8)
`June 1, 2015
`
`July 31, 2015
`
`Petitioner’s Proposal
`for Schedule with
`Joinder
`June 1, 2015
`To the extent necessary,
`a 7-page supplemental
`Response addressing
`Apple Petition may be
`submitted on June 8,
`2015 (assuming
`institution decision circa
`May 28, 2015)
`July 31, 2015
`
`August 31, 2015
`
`August 31, 2015
`
`September 21, 2015
`
`September 21, 2015
`
`October 5, 2015
`
`October 5, 2015
`
`October 13, 2015
`
`October 13, 2015
`
`October 29, 2015
`
`October 29, 2015
`
`
`
`-13-
`
`
`
`
`
`Due Date 1
`Patent owner’s response to the
`petition
`Patent owner’s motion to amend
`the patent
`
`Due Date 2
`Petitioner’s reply to patent
`owner’s response to petition
`Petitioner’s opposition to motion
`to amend
`Due Date 3
`Patent owner’s reply to
`petitioner’s opposition to motion
`to amend
`Due Date 4
`Motion for observation regarding
`cross-examination of reply witness
`Motion to exclude evidence
`Request for oral argument
`Due Date 5
`Response to observation
`Opposition to motion to exclude
`Due Date 6
`Reply to opposition to motion to
`exclude
`Due Date 7
`Oral argument (if requested)
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing MOTION FOR
`
`JOINDER UNDER 35 U.S.C. § 325(c) AND 37 C.F.R. §§ 42.22 AND 42.122(b)
`
`AND REQUEST FOR SHORTENED RESPONSE TIME FOR PATENT
`
`OWNER’S PRELIMINARY RESPONSE has been served by U.S. Express Mail on
`
`Patent Owner indicated for U.S. Patent No. 8,061,598 B2 through the following
`
`correspondence address of record:
`
`Davidson Berquist Jackson & Gowdey LLP
`8300 Greensboro Dr, Suite 500
`McLean, VA 22102
`
`
`
` /Lauren N. Robinson /
`Lauren N. Robinson
`ROPES & GRAY LLP
`1900 University Ave., 6th Floor
`East Palo Alto, CA 94303
`(650) 617-4000
`
`
`
`Dated: April 30, 2015
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