`Tel: 571-272-7822
`
`
`Paper 25
`Entered: April 26, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`
`CBM2015-00129
`Patent 7,942,317 B2
`
`Before JENNIFER S. BISK, RAMA G. ELLURU,
`JEREMY M. PLENZLER, and MATTHEW R. CLEMENTS,
`Administrative Patent Judges.
`
`ELLURU, Administrative Patent Judge.
`
`
`
`DECISION
`Motion to Terminate
`37 C.F.R. § 42.72
`
`
`
`
`
`
`
`
`
`
`
`CBM2015-00129
`Patent 7,942,317 B2
`On November 23, 2015, we instituted a transitional covered business
`method patent review (Paper 8, “Institution Decision” or “Inst. Dec.”) based
`upon Petitioner Google Inc.’s (“Google”) assertion that claims 7 and 12
`(“the challenged claims”) of U.S. Patent No. 7,942,317 (“the ’317 patent”)
`are directed to patent ineligible subject matter under 35 U.S.C. § 101. Inst.
`Dec. 22.
`On April 15, 2016, Patent Owner Smartflash LLC (“Smartflash”) filed
`an authorized motion to terminate this proceeding as moot. Paper 22, 1.
`Google does not oppose the motion to terminate. Paper 23.
`As Smartflash’s motion relates, by Final Written Decision in
`CBM2014-00112, we determined that claims 7 and 12, among other claims,
`of the ’317 patent are unpatentable under 35 U.S.C. § 103. Apple Inc. v.
`Smartflash LLC, Case CBM2014-00112, Paper 48 at 29 (PTAB September
`25, 2015). Smartflash states that “[o]n 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.” Paper 22,
`1; see Exhibit 2117.
`We are persuaded that the particular facts of this proceeding now
`counsel termination. 37 C.F.R. § 42.72. Claims 7 and 12 of the ’317 patent
`have been finally cancelled and any decision we might reach in this
`proceeding regarding the patentability of these claims would be moot and
`purely advisory. We do not see how the just, speedy, and inexpensive
`resolution of every proceeding (37 C.F.R. § 42.1(b)) would be secured by
`rendering a final written decision in this case.
`
`
`2
`
`
`
`CBM2015-00129
`Patent 7,942,317 B2
`
`ORDER
`
`Accordingly it is
`ORDERED that Smartflash’s motion to terminate this proceeding is
`granted; and
`FURTHER ORDERED that CBM2015-00129 is terminated.
`
`
`
`
`3
`
`
`
`CBM2015-00129
`Patent 7,942,317 B2
`PETITIONER:
`
`Andrew M. Holmes
`Raymond N. Nimrod
`QUINN EMANUEL URQUHART & SULLIVAN,
`LLP raynimrod@quinnemanuel.com
`QE-SF-PTAB-Service@quinnemanuel.com
`
`PATENT OWNER:
`
`Michael R. Casey
`Wayne M. Helge
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`mcasey@dbjg.com
`whelge@davidsonberquist.com
`jsd@dbjg.com
`
`
`
`4
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