IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE INC.
`Petitioner,
`
`v.
`
`SMARTFLASH LLC
`Patent Owner.
`
`Case CBM2015-00125
`Patent No. 7,334,720 B2
`
`
`
`
`
`
`
`
`
`PETITIONER GOOGLE INC.’S MOTION FOR JOINDER UNDER
`35 U.S.C. § 325(C) AND 37 C.F.R. § 42.222 AND REQUEST FOR
`SHORTENED RESPONSE TIME FOR PATENT OWNER’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`Mail Stop “Patent Board”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE INC.
`Petitioner,
`
`v.
`
`SMARTFLASH LLC
`Patent Owner.
`
`Case CBM2015-00125
`Patent No. 7,334,720 B2
`
`
`
`
`
`
`
`
`
`PETITIONER GOOGLE INC.’S MOTION FOR JOINDER UNDER
`35 U.S.C. § 325(C) AND 37 C.F.R. § 42.222 AND REQUEST FOR
`SHORTENED RESPONSE TIME FOR PATENT OWNER’S
`PRELIMINARY RESPONSE
`
`
`
`
`
`Mail Stop “Patent Board”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`I.
`
`RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 325(c) and 37 C.F.R. § 42.222, Petitioner Google
`
`Inc. (“Google”) respectfully requests joinder of the above-captioned covered
`
`business method review (“Google CBM”) with pending covered business method
`
`reviews Apple Inc. v. Smartflash LLC, CBM2015-00028, and Apple Inc. v.
`
`Smartflash LLC, CBM2015-00029, (together, “Apple CBMs”), which were
`
`instituted on May 28, 2015. Joinder will promote efficient resolution of the
`
`question at issue in all of the related proceedings: whether the challenged claims
`
`of U.S. Patent No. 7,334,720 (the “’720 patent”) are unpatentable for failing to
`
`claim patent eligible subject matter under 35 U.S.C. § 101. Joinder will not
`
`prejudice any of the participating parties, should not impact the overall time for
`
`resolving the Apple CBMs, and will require, at most, extension of a single deadline
`
`in those proceedings.
`
`In order to facilitate joinder, Google also respectfully requests that the
`
`deadline for Patent Owner’s preliminary response to Google’s petition be
`
`accelerated. Such an accelerated response date will not be unduly prejudicial to
`
`Patent Owner because (i) Patent Owner has already prepared several preliminary
`
`and post-institution responses to Section 101 challenges to claims of the ’720
`
`patent and related patents and (ii) the Board has already instituted Apple’s CBMs
`
`on the same ground as the one asserted in Google’s petition.
`
`
`
`1
`
`
`
`II.
`
`STATEMENT OF MATERIAL FACTS
`
`1.
`
`On May 6, 2015, Google petitioned for covered business method
`
`review of claims 1 and 15 of the ’720 patent on the ground that the subject matter
`
`of those claims is unpatentable under 35 U.S.C. § 101. Google Inc. v. Smartflash
`
`LLC, CBM2015-00125, Pap. 1. Google’s petition relies in part on the declaration
`
`of Dr. Justin Douglas Tygar. Id.
`
`2.
`
`Patent Owner’s preliminary response to Google’s petition is currently
`
`due August 18, 2015. Google, CBM2015-00125, Pap. 5 at 1.
`
`3.
`
`On May 28, 2015, the Board instituted covered business method
`
`review of claims 1, 2, 3, and 15 of the ’720 patent in response to Apple’s petitions,
`
`which assert that the subject matter of those claims is unpatentable under 35 U.S.C.
`
`§ 101 and which rely in part on the declaration of Mr. Anthony J. Wechselberger.
`
`Apple, CBM2015-00028, Pap. 11 (claims 1 and 2); Apple, CBM2015-00029, Pap.
`
`11 (claims 3 and 15). In its institution decisions, the Board found that (i) the
`
`challenged claims “are more likely than not drawn to a patent-ineligible abstract
`
`idea,” (ii) the “potentially technical additions to the claims” are all “purely
`
`conventional,” and (iii) the challenged claims do not “add an inventive concept
`
`sufficient to ensure that the patent in practice amounts to significantly more than a
`
`patent on the abstract idea itself.” Apple, CBM2015-00028, Pap. 10 at 10-13;
`
`Apple, CBM2015-00029, Pap. 11 at 12-14.
`
`
`
`2
`
`
`
`4.
`
`Patent Owner’s responses to Apple’s petitions are currently due July
`
`29, 2015. Apple, CBM2015-00028, Pap. 12 at 6; Apple, CBM2015-00029, Pap. 12
`
`at 6.
`
`
`
`III. STATEMENT OF REASONS FOR RELIEF REQUESTED
`
`“The AIA permits joinder of like review proceedings.” Trulia, Inc. v.
`
`Zillow, Inc., CBM2014-00115, Pap. 8 at 18, 2014 WL 4219513, at *10 (May 1,
`
`2014). Under 35 U.S.C. § 325(c):
`
`If more than 1 petition for a post-grant [or covered business method] 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 [or covered business method] review under section 324, the
`
`Director may consolidate such reviews into a single post-grant [or covered
`
`business method] review.1
`
`See also 37 C.F.R. § 42.222(a) (“Where another matter involving the patent is
`
`before the Office, the Board may during the pendency of the post-grant [or covered
`
`
`1 Pursuant to AIA § 18(a)(1), the standards and procedures governing post-
`
`grant review also govern covered business method review. See also Trulia,
`
`CBM2014-00115, Pap. 8 at 18, 2014 WL 4219513, at *10 (“The statutory
`
`provision governing joinder of covered business method patent review proceedings
`
`is 35 U.S.C. § 325(c).”).
`
`
`
`3
`
`
`
`business method] review enter any appropriate order regarding the additional
`
`matter including providing for the . . . consolidation . . . of any such matter.”).
`
`The Board determines 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.” Dell Inc. v. Network-1 Security Solutions, Inc.,
`
`IPR2013-00385, Pap. 17 at 3, 2013 WL 5947712, at *2 (July 29, 2013). The
`
`Board has instructed that a motion for joinder should: “(1) set forth the reasons
`
`why joinder is appropriate; (2) identify any new grounds of unpatentability
`
`asserted in the petition; (3) explain what impact (if any) joinder would have on the
`
`trial schedule for the existing review; and (4) address specifically how briefing and
`
`discovery may be simplified.” Sony Corp. v. Yissum Research Development Co.,
`
`IPR2013-00219, Pap. 15 at 3, 2013 WL 5970153, at *2 (Sept. 24, 2013) (citing
`
`Kyocera Corp. v. Softview LLC, IPR2013-00004, Pap. 15 at 4 (Apr. 24, 2013)).
`
`All of these considerations weigh in favor of joinder.
`
`A.
`
`Joinder Is Timely, Appropriate, And Not Prejudicial
`
`This motion for joinder is timely and authorized, because it is being filed
`
`within one month of the May 28, 2015 institution of Apple’s CBMs. 37 C.F.R.
`
`§ 42.222(b) (providing that a motion for joinder must be filed within one month of
`
`institution of the review for which joinder is requested); 35 U.S.C. § 21(b); Taiwan
`
`Semiconductor Mfg. Co. v. Zond, LLC, IPR2014-00781, Pap. 5 at 3 (May 29, 2014)
`
`
`
`4
`
`
`
`(“As articulated by the Board during the call, prior authorization for filing a motion
`
`for joinder—prior to one month after the institution date of any inter partes review
`
`for which joinder is requested—is not required.”).2
`
`Joinder is appropriate because it will allow the Board to resolve the
`
`arguments raised by both Apple and Google regarding a single question (i.e.,
`
`whether the subject matter of the challenged claims is patent-eligible) in a single,
`
`comprehensive proceeding. The fact that the same patent, the same claims, and the
`
`same ground for finding unpatentability are at issue in both the Google CBM and
`
`the Apple CBMs counsels strongly in favor of joinder. See, e.g., Skimlinks, Inc. et
`
`
`2 While the Board has yet to institute Google’s petition as required by 35
`
`U.S.C. § 325(c), the Board has now determined as part of the Apple CBMs that
`
`each of the claims challenged by Google is more likely than not unpatentable on
`
`the same ground on which Google’s petition is based. Apple, CBM2015-00028,
`
`Pap. 11 (claims 1 and 2); Apple, CBM2015-00029, Pap. 11 (claims 3 and 15). As
`
`discussed in Section IV, infra, Google requests an accelerated schedule for Patent
`
`Owner’s preliminary response (if any)—as the Board has ordered in other
`
`proceedings—in order to facilitate timely joinder. See, e.g., Apple Inc. v.
`
`Smartflash LLC, CBM2015-00117, Pap. 5 at 3 (accelerating the deadline for Patent
`
`Owner’s preliminary response by two months to facilitate consideration of
`
`joinder).
`
`
`
`5
`
`
`
`al. v. Linkgine, Inc., CBM2015-00087, Pap. 14 at 25, 2015 WL 3799545, at *15
`
`(June 15, 2015); Dell, IPR2013-00385, Pap. 17 at 7, 2013 WL 5947712, at *4; Ion
`
`Geophysical Corp. et al. v. WesternGeco LLC, IPR2015-00565, Pap. 14 at 5, 2015
`
`WL 1906173, at *3 (Apr. 23, 2015). The Board should have a comprehensive
`
`record—including both Google’s and Apple’s independent analysis and distinct
`
`expert evidence—on which to base its final written decision regarding the question
`
`of patent eligibility. See, e.g., T-Mobile Usa, Inc. et al. v. Mobile Telecommc’ns
`
`Techs., LLC, IPR2015-00018, Pap. 13 at 5, 2015 WL 1594792, at *3 (Apr. 8,
`
`2015) (holding that addressing “differences in Petitioner’s evidence and arguments
`
`regarding claim construction and the substantive application of the prior art to the
`
`claims . . . in a single proceeding is the most efficient course of action”); Skimlinks,
`
`CBM2015-00087, Pap. 14 at 26, 2015 WL 3799545, at *16 (same); Oxford
`
`Nanopore Techs. Ltd. v. Univ. of Washington, IPR2015-00057, Pap. 10, 2015 WL
`
`1940213, at *16 (Apr. 27, 2015) (joining petition asserting new ground and new
`
`evidence with petition filed six months earlier).
`
`Joining the Google CBM with the Apple CBMs will not prejudice Patent
`
`Owner. First, the efficiencies associated with consolidating the pending challenges
`
`should benefit Patent Owner, who will be able to offer responses to all of the
`
`petitioners’ arguments at one time rather than at different times in different
`
`proceedings. Second, joinder will not result in a de facto tactical advantage for
`
`
`
`6
`
`
`
`Google. Google did not have the benefit of the Board’s analysis or decision
`
`regarding Apple’s CBM petitions prior to filing its own petition, and consolidation
`
`will ensure that all parties remain on the same footing in that regard. See T-
`
`Mobile, IPR2015-00018, Pap. 13 at 5, 2015 WL 1594792, at *3 (granting joinder).
`
`And third, as discussed further below, Google’s arguments and evidence can be
`
`considered as part of the Apple CBMs with little modification to the Scheduling
`
`Order and without disrupting the date for oral argument or the default deadline for
`
`the Board’s final written decision.
`
`These considerations all weigh in favor of joinder.
`
`B. No New Grounds of Unpatentability Are Asserted In Google’s
`Petition
`
`Google’s petition does not assert any new grounds of unpatentability. It
`
`involves the same ’720 patent, the same claims, and the same ground for
`
`unpatentability as are at issue in the Apple CBMs. This consideration also weighs
`
`in favor of joinder.
`
`C.
`
`Joinder Will Have Minimal Impact On The Trial Schedule For
`The Existing Review
`
`Joinder will have minimal impact on the trial schedule for the existing
`
`review, because Google’s petition is substantially similar to the petitions in the
`
`Apple CBMs and does not raise any new grounds for unpatentability. At most,
`
`joinder may require additional time for Patent Owner to file its response in the
`
`
`
`7
`
`
`
`joined proceedings and, if Patent Owner desires, to depose Google’s expert—a
`
`witness that Patent Owner will likely seek to depose in any event in connection
`
`with Google’s other pending Section 101 petitions.3 No discovery beyond an
`
`expert deposition has been permitted in any other instituted proceedings on the
`
`’720 patent or related patents, and no other discovery will be necessary here. See,
`
`e.g., Samsung, CBM2014-00190, Pap. 13 at 5; Apple, CBM2015-00015, Pap. 28 at
`
`4.
`
`To the extent Patent Owner requires additional time to depose Google’s
`
`expert and/or to file its response, the deadline for Patent Owner’s response (Due
`
`Date 1) may be extended by a month to August 28, 2015 (for example) to
`
`accommodate Patent Owner without impacting any other deadlines. A proposed
`
`schedule for the consolidated proceeding is set out in Appendix A to this motion.
`
`Google is also amenable, in coordination with the Patent Owner and Apple,
`
`to other arrangements that the Board deems appropriate. To the extent the Board
`
`determines that incorporating Google’s arguments and evidence in the Apple
`
`
`3 Google has petitioned for covered business method review of various
`
`claims of U.S. Patent Nos. 7,942,317, 8,118,221, and 8,336,772, which are not
`
`challenged by any prior petition filed by any party. Google Inc. v. Smartflash LLC,
`
`CBM2015-00126, Pap. 2; Google Inc. v. Smartflash LLC, CBM2015-00129, Pap.
`
`2; Google Inc. v. Smartflash LLC, CBM2015-00132, Pap. 7.
`
`
`
`8
`
`
`
`CBMs would complicate the schedule, Google requests joinder as to Apple’s
`
`petitions so that Google can, at minimum, ensure that the proceedings on the
`
`challenged claims continue in the event Apple settles or otherwise terminates the
`
`proceedings.
`
`Because joinder will have minimal impact on the trial schedule for the
`
`existing review and no impact on the timing for oral argument or the Board’s final
`
`written decision, this consideration weighs in favor of joinder.
`
`D. The Board May Adopt Procedures To Simplify Briefing And
`Discovery
`
`Because Google and Apple will be addressing the same ground, the Board
`
`may simplify briefing and discovery by adopting procedures similar to those
`
`adopted in, for example, Skimlinks, Inc. et al. v. Linkgine, Inc., CBM2015-00087,
`
`Pap. 14, and Dell Inc. v. Network-1 Security Solutions, Inc., IPR2013-00385, Pap.
`
`17. In those proceedings, the Board ordered that petitioners file consolidated
`
`briefing, with the second petitioner to file a short, supplemental brief addressing
`
`any points of disagreement with the first petitioner. Id. This procedure would
`
`streamline the briefing before the Board, further increasing efficiency, and
`
`minimize any potential complication or delay caused by joinder. See Motorola
`
`Mobility LLC v. Softview LLC, IPR2013-00256, Pap. 10 at 9, 2013 WL 6514080, at
`
`*4 (June 20, 2013) (holding that similar approach “should avoid introducing delay
`
`that could arise from lengthy briefing by each party, while providing the parties an
`
`
`
`9
`
`
`
`opportunity to address all issues that may arise” and that “these limitations on
`
`additional filings by [Petitioners] also avoid placing an undue burden on [Patent
`
`Owner]”). Should joinder be granted, Google will work with Apple to manage all
`
`aspects of the proceedings to avoid redundancy and burden on the Board and
`
`Patent Owner. Skimlinks, CBM2015-00087, Pap. 14 at 26, 2015 WL 3799545, at
`
`*16; Dell, IPR2013-00385, Pap. 17 at 11, 2013 WL 5947712, at *6. Google will
`
`also work to make its expert available to Patent Owner at Patent Owner’s
`
`convenience to facilitate the sole potential area of additional discovery.
`
`These considerations weigh in favor of joinder.
`
`IV. THE BOARD SHOULD ACCELERATE THE DEADLINE FOR
`PATENT OWNER’S PRELIMINARY RESPONSE
`
`The Board has already determined that the same claims challenged by
`
`Google are more likely than not unpatentable on the same ground asserted in
`
`Google’s petition. Apple, CBM2015-00028, Pap. 8; Apple, CBM2015-00029, Pap.
`
`8. In order to facilitate timely joinder, Google respectfully requests that the Board
`
`accelerate the deadline for the Patent Owner’s preliminary response to Google’s
`
`petition by approximately one month, or to July 13, 2015. See, e.g., Apple,
`
`CBM2015-00117, Pap. 5 at 3 (accelerating the deadline for Preliminary Response
`
`by two months to facilitate consideration of joinder). This will not prejudice or
`
`impose undue burden on the Patent Owner.
`
`
`
`10
`
`
`
`Patent Owner has already filed preliminary responses to petitions concerning
`
`the same ground for unpatentability of the same two claims at issue in Google’s
`
`petition. Apple, CBM2015-00028, Pap. 8; Apple, CBM2015-00029, Pap. 8.
`
`Indeed, Patent Owner has already prepared over eleven preliminary responses and
`
`eight post-institution responses (reciting largely similar arguments) in connection
`
`with Section 101 challenges to the ’720 patent and related patents. See Samsung,
`
`CBM2014-00190, Pap. 7, Pap. 22; Apple, CBM2015-00018, Pap. 11, Pap. 25;
`
`Samsung, CBM2014-00192, Pap. 5, Pap. 20; Apple, CBM2015-00016, Pap. 19,
`
`Pap. 33; Samsung, CBM2014-00193, Pap. 5, Pap. 20; Apple, CBM2015-00017,
`
`Pap. 18, Pap. 32; Samsung, CBM2014-00194, Pap. 7, Pap. 23; Apple, CBM2015-
`
`00015, Pap. 19, Pap. 33; Apple, CBM2015-00031, Pap. 8; Apple, CBM2015-
`
`00032, Pap. 8; Apple, CBM2015-00033, Pap. 8. Accordingly, accelerating the
`
`deadline for the preliminary response in the Google CBM to facilitate the
`
`streamlining of proceedings through joinder should not place an undue burden on
`
`Patent Owner.
`
`V.
`
` CONCLUSION
`
`For the foregoing reasons, Google respectfully requests that the Board join
`
`the Google CBM with the Apple CBMs and that the Board accelerate the deadline
`
`for the Patent Owner’s preliminary response to Google’s petition to facilitate
`
`timely joinder.
`
`
`
`11
`
`
`
`Although Google does not believe that any fee is required for this motion,
`
`the Commissioner is authorized to charge any additional fees that may be required
`
`to Deposit Account No. 505708.
`
`
`Dated: June 29, 2015
`
`
`
`
`
`
`Respectfully submitted,
`
`/Raymond N. Nimrod/
`
`Raymond N. Nimrod (Reg. No. 31,987)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Telephone: 212-849-7000
`Fax: 212-849-7100
`
`Charles K. Verhoeven
`Melissa J. Baily
`Andrew M. Holmes (Reg. No. 64,718)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`50 California Street, 22nd Floor
`San Francisco, CA 94111
`Telephone: 415-875-6600
`Fax: 415-875-6700
`
`Counsel for Petitioner Google Inc.
`
`12
`
`
`
`APPENDIX A
`
`Event
`
`Pre-Joinder Schedule
`
`Post-Joinder Schedule
`
`Patent Owner’s
`preliminary response to
`Google’s petition4
`
`August 18, 2015
`
`July 13, 2015
`
`DUE DATE 15
`
`July 29, 2015
`
`August 28, 2015
`
`Patent Owner’s response
`to the petition
`
`Patent Owner’s motion to
`amend the patent
`
`DUE DATE 2
`
`September 29, 2015
`
`September 29, 2015
`
`Petitioner’s reply to
`Patent Owner’s response
`to petition
`
`Petitioner’s opposition to
`motion to amend
`
`
`
`DUE DATE 3
`
`October 29, 2015
`
`October 29, 2015
`
`Patent Owner’s reply to
`Petitioner’s opposition to
`motion to amend
`
`
`
`
`4 Google, CBM2015-00125, Pap. 5 at 1.
`
`5 Apple, CBM2015-00028, Pap. 12 at 6; Apple, CBM2015-00029, Pap. 12
`
`at 6-7.
`
`
`
`13
`
`
`
`Event
`
`Pre-Joinder Schedule
`
`Post-Joinder Schedule
`
`DUE DATE 4
`
`November 19, 2015
`
`November 19, 2015
`
`
`
`Motion for observation
`regarding cross-
`examination of reply
`witness
`
`Motion to exclude
`evidence
`
`Request for oral argument
`
`DUE DATE 5
`
`December 3, 2015
`
`December 3, 2015
`
`Response to observation
`
`Opposition to motion to
`exclude
`
`
`
`DUE DATE 6
`
`December 10, 2015
`
`December 10, 2015
`
`Reply to opposition to
`motion to exclude
`
`DUE DATE 7
`
`January 6, 2016
`
`January 6, 2016
`
`Oral argument (if
`requested)
`
`
`
`
`
`14
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on June 29, 2015 I served the foregoing motion by email
`
`to:
`
`mcasey@dbjg.com
`
`SmartFlash-CBM@dbjg.com
`
`for:
`
`Michael R. Casey
`Davidson Berquist Jackson & Gowdey LLP
`8300 Greensboro Drive
`Suite 500
`McLean, VA 22102
`
`/Adam Botzenhart/
`Adam Botzenhart
`
`
`
`
`
`Date: June 29, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`15
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