IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE INC.
`Petitioner,
`
`v.
`
`SMARTFLASH LLC
`Patent Owner.
`
`Case CBM2015-00132
`Patent No. 8,336,772 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
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`Mail Stop “Patent Board”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GOOGLE INC.
`Petitioner,
`
`v.
`
`SMARTFLASH LLC
`Patent Owner.
`
`Case CBM2015-00132
`Patent No. 8,336,772 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
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`
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`
`
`
`Mail Stop “Patent Board”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
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`With respect to Google’s Motion for Joinder, the Board should enter an
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`order consistent with the Board’s precedents across CBM review proceedings
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`related to the Smartflash family of patents. Specifically, with respect to claims that
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`were challenged by Google based on § 101 but are now subject to other CBM
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`review proceedings based on § 101 (claims 1, 5, 10, 14, and 22 of the ’772 patent),
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`the Board should grant Google’s motion to join the already pending proceedings
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`(on the same schedule and on the basis of the same arguments and evidence as the
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`pending proceedings). With respect to claims that are challenged by Google based
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`on § 101 and that have never previously been challenged by any petitioner on that
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`ground (claims 9 and 21 of the ’772 patent), the Board should institute CBM
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`review in these proceedings for the reasons stated in Google’s petition.
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`I.
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`GOOGLE’S CHALLENGE TO CLAIMS 1, 5, 10, 14, AND 22
`SHOULD BE CONSOLIDATED WITH THE APPLE CBM
`PROCEEDINGS
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`With respect to the claims of the ’772 patent that are challenged both by
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`Google in its May 8, 2015 petition and by Apple in the Apple CBM proceedings,1
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`Google’s Motion for Joinder requested one of two forms of relief (following any
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`institution decision): (i) joinder of Google’s arguments and evidence to the Apple
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`CBM proceedings or (ii) joinder of Google to Apple’s arguments and evidence in
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`1 Claims 1, 5, and 10 are challenged by Apple in CBM2015-00031. Claims
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`14 and 22 are challenged by Apple in CBM2015-00032.
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`1
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`the Apple CBM proceedings. After Google filed its Motion, the Board issued a
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`decision regarding an analogous motion for joinder filed by Samsung. Samsung
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`Elecs. Am., Inc. v. Smartflash LLC, No. CBM2015-00059, Pap. 13 at 6-7 (Aug. 5,
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`2015). In light of the Board’s decision to join Samsung to Apple’s arguments and
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`evidence in the Apple CBM proceedings, Google reiterates its request for
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`analogous relief here.
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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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`2
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`
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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, 5, 10, 14 and 22 of the ’772 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, 5, 10, 14, AND 22
`SHOULD BE DENIED
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`In its Opposition to Google’s Motion, Smartflash contends that Google’s
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`petition challenging claims 1, 5, 10, 14, and 22 of the ’772 patent should be denied
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`outright under 35 U.S.C. § 325(d), solely because CBM review of the same claims
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`has now been instituted in the context of the Apple CBM proceedings. (Opp. at 5-
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`6.) But 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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`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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`3
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`III. GOOGLE’S CHALLENGE TO CLAIMS 9 AND 21 SHOULD BE
`INSTITUTED AND PROCEED SEPARATELY FROM THE APPLE
`CBM PROCEEDINGS
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`In its petition, Google challenged claims 9 and 21 of the ’772 patent on the
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`basis that the subject matter of those claims is patent ineligible under § 101. No
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`other petitioner has challenged those claims on that ground, and there are no
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`instituted proceedings in which those claims are at issue.3 Nonetheless, in its
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`Opposition to Google’s Motion, Smartflash contends that Google’s challenge to
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`claims 9 and 21 should be denied under 35 U.S.C. § 325(d), merely because the
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`Board instituted CBM review of other claims from the ’772 patent in the Apple
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`CBM proceedings. (Opp. at 6.) The Board should not decline to institute CBM
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`review of claims 9 and 21 on that basis.
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`To the contrary, the fact that the Board has already instituted CBM review of
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`claim 8 of the ’772 patent (from which claim 9 depends) and claim 19 of the ’772
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`patent (from which claim 21 depends) only supports Google’s petition for CBM
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`review of claims 9 and 21. In its decisions instituting CBM review of independent
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`claims 8 and 19, the Board found that claims 8 and 19 are “more likely than not . . .
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`3 Smartflash asserted claims 9 and 21 against Google in Smartflash LLC v.
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`Google Inc., No. 14-cv-435 (E.D. Tex.), which is currently stayed pending
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`resolution of these proceedings (Dkt. 179 at 46); Smartflash does not appear to
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`have asserted claims 9 and 21 in its litigation against either Apple or Samsung.
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`4
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`unpatentable” for claiming patent-ineligible subject matter. Apple v. Smartflash,
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`CBM2015-00031, Pap. 11 at 15; Apple v. Smartflash, CBM2015-00032, Pap. 11,
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`at 14. Claims 9 and 21 each recite only one additional limitation over claims 8 and
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`19 respectively, namely: “wherein said data carrier is integrated into the data
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`access terminal, and wherein said data carrier comprises flash memory.” For the
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`reasons stated in Google’s petition, this limitation cannot transform the subject
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`matter of independent claims 8 and 19—which have already been found more
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`likely than not patent ineligible—into the sort of technical innovation eligible for
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`patent protection. Dependent claims 9 and 21 are thus invalid, and the Board
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`should institute CBM review of those claims in this proceeding. Such an outcome
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`would be consistent with all of the Board’s precedents in Smartflash-related
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`proceedings. E.g., Apple v. Smartflash, No. CBM2015-00029, Pap. 11, at 15, 19
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`(May 28, 2015) (instituting CBM review proceedings based on § 101 even though
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`other claims from the same patent were already subject to CBM review
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`proceedings based on § 101); Apple v. Smartflash, No. CBM2015-00017, Pap. 22,
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`at 16, 20 (Apr. 10, 2015) (same); Apple v. Smartflash, No. CBM2015-00016, Pap.
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`23, at 20, 26 (Apr. 10, 2015) (same); Apple v. Smartflash, No. CBM2015-00015,
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`Pap. 23, at 18, 21 (Apr. 10, 2015) (same).
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`5
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`Dated: August 31, 2015
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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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`6
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on August 31, 2015 I served the foregoing motion by
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`email to:
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`mcasey@dbjg.com
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`SmartFlash-CBM@dbjg.com
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`for:
`
`Michael R. Casey
`Davidson Berquist Jackson & Gowdey LLP
`8300 Greensboro Drive
`Suite 500
`McLean, VA 22102
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`/Adam Botzenhart/
`Adam Botzenhart
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`
`
`
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`Date: August 31, 2015
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`
`7
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