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 7,334,720 B2
`
`____________
`
`PATENT OWNER’S OPPOSITION TO 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
`
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`____________
`
`Case CBM2015-00125
`Patent 7,334,720 B2
`
`____________
`
`PATENT OWNER’S OPPOSITION TO 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
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Patent Owner hereby opposes 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.
`
`Petitioner seeks to join CBM2015-00125 with covered business method
`
`review cases CBM2015-00028 and -00029 filed by Apple Inc. Motion, Paper 7 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
`
`review of claims 1 and 15 of U.S. Patent 7,334,720 on 35 U.S.C. § 101 grounds in
`
`CBM2015-00125 because it has already instituted covered business method review
`
`of those claims on the same grounds in CBM2015-00028 and -00029.
`
`II. RESPONSE TO STATEMENT OF MATERIAL FACTS
`
`1 – 4. Admitted.
`
`III. STATEMENT OF MATERIAL FACTS
`
`1.
`
`There has been no Institution Decision issued in CBM2015-00125.
`
`
`
`- 1 -
`
`
`
`2.
`
`Under Petitioner’s proposed “Post-Joinder Schedule” (Motion for
`
`Joinder, Paper 7 at 13), the proposed date for Patent Owner’s Preliminary
`
`Response to Google’s Petition in CBM2015-00125 is July 13, 2015, 16 days
`
`before this Opposition is due, and has already passed.
`
`3.
`
`There is no overlap in witnesses proffered by Google in CBM2015-
`
`00125 (Dr. Justin Douglas Tygar) with witnesses proffered by Apple in
`
`CBM2015-00028 and -00029 (Mr. Anthony J. Wechselberger).
`
`4.
`
`In support of its §101 petition, Google relies on Exhibits 1006- 1009
`
`generally relating to electronic publishing, and Exhibits 1023 – 1024 covering
`
`wide ranging topics including the history of libraries in the Western world, the
`
`first toll roads, the politics of alcohol, and practical aviation security. Those
`
`Exhibits, as well as others, are not in CBM2015-00028 and -00029.
`
`IV. ARGUMENT
`
`A.
`
`It Is Too Late For The Proposed Joinder To Provide The
`Purported Efficiencies Petitioner Suggests.
`
`Petitioner claims that “[j]oinder will promote efficient resolution of the
`
`question at issue in all of the related proceedings: whether the challenged claims of
`
`… the ’720 patent are unpatentable for failing to claim patent eligible subject
`
`matter under 35 U.S.C. § 101.” Motion, Paper 7 at 1. Any efficiencies that might
`
`have existed at the time that CBM2015-00028 and -00029 were instituted on May
`
`28, 2015, however, were squandered by Petitioner waiting until the very last
`
`
`
`- 2 -
`
`
`
`allowable day (June 29, 2015) to file its Motion for Joinder. In the meantime,
`
`CBM2015-00028 and -00029 have proceeded through Patent Owner discovery to
`
`the point of Patent Owner’s Response being filed on July 29, 2015. In CBM2015-
`
`00125, the preliminary response is not due until August 18, 2015.
`
`Petitioner Google posits that “[j]oinder 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”. Motion, Paper 7 at 7. Review of the
`
`petitions, however, reveals that Apple and Google rely on different exhibits and
`
`witnesses. Simply comparing the Exhibit Lists shows this.
`
`Petitioner’s proposed schedule is impractical. Under Petitioner’s proposed
`
`“Post-Joinder Schedule” (Motion for Joinder, Paper 7 at 13), the proposed date for
`
`Patent Owner’s Preliminary Response to Google’s Petition in CBM2015-00125 is
`
`July 13, 2015, 16 days before this Opposition is due, and has already passed.
`
`Google proposes that Patent Owner’s response be due on August 28, 2015. As
`
`noted, there has been no institution decision and thus no discovery conducted by
`
`Patent Owner. Google has proffered a witness declaration from Dr. Justin Douglas
`
`Tygar. This witnesses does not overlap with Apple’s witness. Patent Owner has a
`
`right to depose this witness. 37 CFR § 42.53. Clearly Google’s proposed schedule
`
`whereby Patent Owner would depose Google’s witness and prepare a substantive
`
`
`
`- 3 -
`
`
`
`Patent Owner’s Response by August 28, 2015 in a case that has not even been
`
`instituted is not reasonable.1
`
`CBM2015-00028 and -00029 are too far advanced to shoe horn CBM2015-
`
`00125 into the same schedule.
`
`B. The CBM2015-00125 and CBM2015-00028 and -00029 Cases
`Are Sufficiently Different Such That There Is No Advantage
`To Joinder.
`
`In arguing for joinder, Google states “Google’s petition is substantially
`
`similar to the petitions in the Apple CBMs.” Motion, Paper 7 at 7. While both
`
`petitions make the same purely legal argument – that the patent claims are directed
`
`to ineligible subject matter, the CBM2015-00125 and CBM2015-00028/ -00029
`
`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, Google relies on Exhibits 1006- 1009
`
`generally relating to electronic publishing, and Exhibits 1023 – 1024 covering
`
`
`1 Meanwhile, in CBM2015-00059, Petitioner Samsung is proposing that its petition
`
`be joined with CBM2015-00031, -00032, and -00033 (which are proceeding in
`
`lockstep with CBM2015-00028 and -00029) and proffered a schedule whereby
`
`Patent Owner would depose two unique Samsung witnesses and prepare a
`
`substantive Patent Owner’s Response by August 12, 2015. CBM2015-00059,
`
`Motion for Joinder, Paper 11 at 14.
`
`
`
`- 4 -
`
`
`
`wide ranging topics including the history of libraries in the Western world, the first
`
`toll roads, the politics of alcohol, and practical aviation security. Those Exhibits,
`
`as well as others, are not in CBM2015-00028 and -00029.
`
`There is no overlap in witness proffered by Google in CBM2015-00125 (Dr.
`
`Justin Douglas Tygar) with witness proffered by Apple in CBM2015-00028 and -
`
`00029 (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 Google’s stated goal of “promot[ing] efficient resolution
`
`of the question at issue in all of the related proceedings: whether the challenged
`
`claims of … the ’720 patent are unpatentable for failing to claim patent eligible
`
`subject matter under 35 U.S.C. § 101” (Motion, Paper 7 at 1), Patent Owner
`
`submits that the Board should follow its precedent from other Smartflash CBM
`
`proceedings and deny Google’s petition. See, Apple Inc. v, Smartflash LLC,
`
`CBM2015-00015, Paper 23 at 18, Decision, Institution of Covered Business
`
`
`
`- 5 -
`
`
`
`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
`
`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 1 and 15 of
`
`the ‘720 Patent on 35 U.S.C. § 101 grounds in CBM2015-00125 because it has
`
`already instituted covered business method review of those same claims on the
`
`same purely legal § 101 grounds in CBM2015-00028 and -00029.
`
`V. CONCLUSION
`
`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 should be denied.
`
` /
`
` 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
`
`
`Dated: July 29, 2015
`
`
`
`- 6 -
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that this PATENT OWNER’S
`
`OPPOSITION TO 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 by agreement of the parties, July 29, 2015 by emailing copies to
`
`counsel for the Petitioner as follows:
`
`QE-SF-PTAB-Service@quinnemanuel.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
`
`- 7 -
`
`
`
`Dated: July 29, 2015
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
