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
`
`
`
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`PETITIONER GOOGLE INC.’S REPLY IN SUPPORT OF ITS MOTION
`FOR JOINDER UNDER 35 U.S.C. § 325(C) AND 37 C.F.R. § 42.222
`
`
`
`
`
`
`
`
`
`Mail Stop “Patent Board”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`01980-00035/7157366.1
`
`
`
`
`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 REPLY IN SUPPORT OF ITS MOTION
`FOR JOINDER UNDER 35 U.S.C. § 325(C) AND 37 C.F.R. § 42.222
`
`
`
`
`
`
`
`
`
`Mail Stop “Patent Board”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`01980-00035/7157366.1
`
`
`
`
`
`
`
`With respect to Google’s Motion for Joinder, the Board should enter an
`
`order consistent with the Board’s decision in Samsung Electronics America, Inc. v.
`
`Smartflash LLC, No. CBM2015-00059, Pap. 13 (Aug. 5, 2015). Specifically, the
`
`Board should grant Google’s motion to consolidate its challenge to claims 1 and 15
`
`of the ’720 patent with the already pending proceedings in CBM2015-00028 and
`
`CBM2015-00029, on the same schedule and based on the same arguments and
`
`evidence as those already at issue in those proceedings.
`
`I.
`
`GOOGLE’S CHALLENGE TO CLAIMS 1 AND 15 SHOULD BE
`CONSOLIDATED WITH THE APPLE CBM PROCEEDINGS
`
`Google’s Motion for Joinder requested one of two forms of relief (following
`
`any institution decision): (i) joinder of Google’s arguments and evidence to the
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`Apple CBM proceedings1 or (ii) joinder of Google to Apple’s arguments and
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`evidence in the Apple CBM proceedings. (Mot. at 9-10.) After Google filed its
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`Motion, the Board issued a decision regarding an analogous motion for joinder
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`filed by Samsung. Samsung Elecs. Am., Inc. v. Smartflash LLC, No. CBM2015-
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`00059, Pap. 13 at 6-7 (Aug. 5, 2015). In light of the Board’s decision to join
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`Samsung to Apple’s arguments and evidence in the Apple CBM proceedings,
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`Google reiterates its request for analogous relief here.
`
`
`1 Claim 1 is challenged by Apple in CBM2015-00028. Claim 15 is
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`challenged by Apple in CBM2015-00029.
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`01980-00035/7157366.1
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`1
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`
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`Nothing in Smartflash’s Opposition to Google’s Motion counsels against
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`joining Google to Apple’s arguments and evidence in the Apple CBM proceedings.
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`For example, Smartflash argues that joinder is impractical as a matter of
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`scheduling (Opp. at 2-4), but joining Google to Apple’s arguments and evidence
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`does not require any departure from the Scheduling Order issued in the Apple
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`CBM proceedings. See Samsung, CBM2015-00059, Pap. 13 at 6. Similarly,
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`Smartflash argues that joinder is inappropriate because Google and Apple have
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`relied on different exhibits and witnesses in making their respective challenges
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`(Opp. at 4-5), but this consideration is irrelevant with respect to simply joining
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`Google to Apple’s arguments and evidence. See Samsung, CBM2015-00059, Pap.
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`13 at 6. Indeed, for all of the reasons that the Board consolidated Samsung’s and
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`Apple’s proceedings “based on the same schedule, evidence, and argument
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`proffered in the Apple CBM proceedings,” id. at 5-7, the Board should do the same
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`here for Google’s challenges to claims 1 and 15 of the ’720 patent.2
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`II.
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`SMARTFLASH’S REQUEST THAT THE BOARD DECLINE TO
`INSTITUTE CBM REVIEW OF CLAIMS 1 AND 15 SHOULD BE
`DENIED
`
`In its Opposition to Google’s Motion, Smartflash contends that Google’s
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`petition challenging claims 1 and 15 of the ’720 patent should be denied outright
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`2 Similar procedures to those ordered in Samsung, CBM2015-00059, Pap. 13
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`at 9-10, (regarding, for example, consolidated filings) should also be ordered here.
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`01980-00035/7157366.1
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`2
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`
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`under 35 U.S.C. § 325(d), solely because CBM review of the same claims has now
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`been instituted in the context of the Apple CBM proceedings. (Opp. at 5-6.) But
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`the Board is “not required to deny a petition merely because the same or
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`substantially the same . . . arguments previously were considered in another
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`proceeding.” Chicago Mercantile Exch., Inc. v. 5th Market, Inc., No. CBM2015-
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`00061, Pap. 9, at 39-40 (July 16, 2015). And the Board should not deny such a
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`petition under circumstances where, as here, (i) CBM review of the challenged
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`claims should be instituted on the merits of Google’s petition and (ii) a newly
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`instituted CBM review can immediately be consolidated with the “schedule,
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`evidence, and argument” of an earlier proceeding. See Samsung, CBM2015-
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`00059, Pap. 13 at 7.
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`*
`
`*
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`*
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`For the foregoing reasons, the Board should grant Google’s Motion for
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`Joinder to Apple’s arguments and evidence with respect to claims 1 and 15 of the
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`’720 patent.
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`
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`01980-00035/7157366.1
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`3
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`
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`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.
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`
`
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`Dated: August 31, 2015
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`01980-00035/7157366.1
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`4
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`CERTIFICATE OF SERVICE
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`I hereby certify that on August 31, 2015 I served the foregoing motion by
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`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: August 31, 2015
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`01980-00035/7157366.1
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`5
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