UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`GOOGLE INC.,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2015-00129
`
`Patent 7,942,317 B2
`
`____________
`
`
`
`
`
`PATENT OWNER’S MOTION TO TERMINATE
`
`
`
`
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`GOOGLE INC.,
`
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`
`Patent Owner.
`
`____________
`
`Case CBM2015-00129
`
`Patent 7,942,317 B2
`
`____________
`
`
`
`
`
`PATENT OWNER’S MOTION TO TERMINATE
`
`
`
`
`
`
`
`I.
`
`I.
`
`TABLE OF CONTENTS
`
`TABLE OF CONTENTS
`
`INTRODUCTION AND STATEMENT OF PRECISE RELIEF
`REQUESTED ................................................................................................. 1
`REQUESTED ............................................................................................... ..1
`
`INTRODUCTION AND STATEMENT OF PRECISE RELIEF
`
`II.
`II.
`
`STATEMENT OF REASONS FOR THE RELIEF REQUESTED ......... 2
`STATEMENT OF REASONS FOR THE RELIEF REQUESTED ....... ..2
`
`III. CONCLUSION ............................................................................................ ..3
`
`III. CONCLUSION .............................................................................................. 3
`
`
`
`
`
`
`
`
`i
`
`
`
`PATENT OWNER’S LIST OF EXHIBITS
`
`Exhibit Number
`
`Exhibit Description
`
`2001
`
`2002
`
`Congressional Record - House, June 23, 2011, H4480-4505
`
`Congressional Record - Senate, Sep. 8, 2011, S5402-5443
`
`2003-2048
`
`Reserved
`
`2049
`
`2050
`
`Report and Recommendation (on Defendants’ Motions for
`Summary Judgment of Invalidity Pursuant to 35 U.S.C. 101),
`from Smartflash LLC et al. v. Apple, Inc., et al., Case No.
`6:13-CV-447 (E.D. Tex.) and Smartflash LLC et al. v.
`Samsung Electronics Co. Ltd, et al., Case No. 6:13-CV-448
`(E.D. Tex.), dated Jan. 21, 2015
`
`Order adopting Report and Recommendation (on
`Defendants’ Motions for Summary Judgment of Invalidity
`Pursuant to 35 U.S.C. 101), from Smartflash LLC et al. v.
`Apple, Inc., et al., Case No. 6:13-CV-447 (E.D. Tex.) and
`Smartflash LLC et al. v. Samsung Electronics Co. Ltd, et al.,
`Case No. 6:13-CV-448 (E.D. Tex.), dated Feb. 13, 2015
`
`2051-2067
`
`Reserved
`
`2068
`
`Transcript of Deposition of Anthony J. Wechselberger dated
`May 28, 2015 taken in CBM2015-00015, -00016, -00017
`and -00018
`
`2069-2074
`
`Reserved
`
`2075
`
`Order (on Defendants’ Renewed Motion for Judgment as a
`
`ii
`
`
`
`Exhibit Number
`
`Exhibit Description
`
`Matter of Law on the Issue of § 101 under Rule 50(b)); Dkt.
`# 585; from Smartflash LLC, et al. v. Apple Inc., et al., Case
`No. 6:13-CV-447 (E.D. Tex.) dated July 8, 2015.
`
`2076
`
`Transcript of Deposition of Anthony J. Wechselberger dated
`July 22, 2015 taken in CBM2015-00028, -00029, -00031, -
`00032 and -00033
`
`2077-2091
`
`Reserved
`
`2092
`
`Declaration of Emily E. Toohey in Support of Patent
`Owner’s Preliminary Response
`
`2093-2104
`
`Reserved
`
`2105
`
`2106
`
`2107
`
`Transcript of Deposition of Justin Douglas Tygar, Ph.D.
`dated January 19, 2016 taken in CBM2015-00126 and -
`00129
`
`Reserved
`
`Declaration of Emily E. Toohey in Support of Patent
`Owner’s Response
`
`2108-2116
`2117
`
`Reserved
`Smartflash LLC v. Apple Inc., Order, Cases 16-1435, -1445,
`1446, 1447 (Fed. Cir. March 4, 2016)
`
`
`
`iii
`
`
`
`I.
`
`INTRODUCTION AND STATEMENT OF PRECISE RELIEF
`REQUESTED
`
`Patent Owner Smartflash LLC hereby moves to terminate this Covered
`
`Business Method Review (“CBM Review”) of claims 7 and 12 of U.S. Patent
`
`7,942,317 (“the ’317 Patent”) as moot. Smartflash was authorized to file this
`
`motion April 14, 2016.
`
`This CBM Review was instituted only as to claims 7 and 12 as being
`
`directed to patent ineligible subject matter under 35 U.S.C. § 101. CBM2015-
`
`00129, Paper 8 at 22. By Final Written Decision in CBM2014-00112 dated
`
`September 25, 2015, the Board determined claims 7 and 12 of the ‘317 Patent to be
`
`unpatentable under 35 U.S.C. § 103. Apple Inc. v. Smartflash LLC, CBM2014-
`
`00112, Final Written Decision, Paper 48 at 29 (PTAB September 25, 2015). On
`
`March 4, 2016, pursuant to Fed. R. App. P. 42 (b), the United States Court of
`
`Appeals for the Federal Circuit dismissed Smartflash LLC’s appeal of the Board’s
`
`decision in CBM2014-00112 that claims 7 and 12 of the ‘317 Patent are
`
`unpatentable. Thus, claims 7 and 12 of the ‘317 Patent have been finally
`
`adjudicated to be unpatentable. The only issue here in CBM2015-00129 is the
`
`eligibility of claims 7 and 12 of the ‘317 Patent, which is now moot. The Board
`
`should therefore terminate this trial without rendering a Final Written Decision
`
`pursuant to 37 C.F.R. § 42.72.
`
`1
`
`
`
`II.
`
`STATEMENT OF REASONS FOR THE RELIEF REQUESTED
`
`On a petition filed by Google Inc., the Board instituted CBM Review in this
`
`proceeding of claims 7 and 12 only of the ‘317 Patent on 35 U.S.C. § 101 grounds.
`
`CBM2015-00129, Paper 8 at 22.
`
`On a petition filed by Apple Inc., on September 25, 2015 the Board issued a
`
`Final Written Decision, pursuant to 35 U.S.C. § 328(a), determining claims 7 and
`
`12 of the ‘317 Patent to be unpatentable under 35 U.S.C. § 103. Apple Inc. v.
`
`Smartflash LLC, CBM2014-00112, Final Written Decision 35 U.S.C. § 328(a) and
`
`37 C.F.R. § 42.73, Paper 48 at 29, (PTAB September 25, 2015).
`
`On March 4, 2016, pursuant to Fed. R. App. P. 42 (b), the United States
`
`Court of Appeals for the Federal Circuit dismissed Smartflash LLC’s appeal of the
`
`Board’s decision in CBM2014-00112 that claims 7 and 12 of the ‘317 Patent are
`
`unpatentable. Exhibit 2117, Smartflash LLC v. Apple Inc., Order, Cases 16-1435, -
`
`1445, 1446, 1447 (Fed. Cir. March 4, 2016).
`
`Thus, claims 7 and 12 of the ‘317 Patent have been finally adjudicated to be
`
`unpatentable and the issue of those claims’ eligibility here is moot. The Board has
`
`authority under 37 C.F.R. § 42.72 to terminate this trial without rendering a Final
`
`Written Decision. Termination in this circumstance is consistent with 37 C.F.R.
`
`§ 42.1(b)’s requirement that “[t]his part shall be construed to secure the just,
`
`speedy, and inexpensive resolution of every proceeding.”
`
`2
`
`
`
`III. CONCLUSION
`For the forgoing reasons, Patent Owner Smartflash LLC respectfully
`
`requests that the Board terminate this trial on the eligibility of claims 7 and 12 of
`
`the ‘317 Patent without rendering a Final Written Decision pursuant to 37 C.F.R.
`
` /
`
` Michael R. Casey /
`
`
`Michael R. Casey
`Registration No. 40,294
`Davidson Berquist Jackson & Gowdey, LLP
`8300 Greensboro Drive
`Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7705
`Fax: (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
`
`§ 42.72.
`
`Dated: April 15, 2016
`
`
`
`
`
`3
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that this PATENT OWNER’S MOTION
`
`TO TERMINATE (including Patent Owner’s List of Exhibits) and Exhibit 2117 in
`
`CBM2015-00129 were served, by agreement of the parties, April 15, 2016 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 Drive
`Suite 500
`McLean, VA 22102
`Telephone: (571) 765-7705
`Fax: (571) 765-7200
`Email: mcasey@dbjg.com
`Attorney for Patent Owner
`
` /
`
`
`
`Dated: April 15, 2016
`
`
`
`
`
`4
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