Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 8
`Entered: November 18, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`____________
`
`Case CBM2015-00143
`Patent 8,794,516 B2
`____________
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Instituting Inter Partes Review
`37 C.F.R. § 42.208
`
`
`
`
`
`Tel: 571-272-7822
`
`Paper 8
`Entered: November 18, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GOOGLE INC.,
`Petitioner,
`
`v.
`
`SMARTFLASH LLC,
`Patent Owner.
`____________
`
`Case CBM2015-00143
`Patent 8,794,516 B2
`____________
`
`Before JENNIFER S. BISK, RAMA G. ELLURU, and
`GREGG I. ANDERSON, Administrative Patent Judges.
`
`ANDERSON, Administrative Patent Judge.
`
`
`
`DECISION
`Denying Instituting Inter Partes Review
`37 C.F.R. § 42.208
`
`
`
`
`
`
`Case CBM2015-00143
`Patent 8,794,516 B2
`
`
`A. Background
`
`I. INTRODUCTION
`
`Petitioner, Google Inc. (“Google”), filed a Petition and a Redacted
`
`Petition1 requesting covered business method patent review of claims 1, 3, 5,
`
`10, 12, 18, 19, 21, and 24 (the “challenged claims”) of U.S. Patent No.
`
`8,794,516 B2 (Ex. 1001, “the ’516 patent”). Papers 1, 2 (“Pet.”). Patent
`
`Owner, Smartflash LLC (“Smartflash”), filed a Preliminary Response.
`
`Paper 7 (“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 324.
`
`We deny the Petition and do not institute covered business method
`
`patent review.
`
`B. Asserted Grounds
`
`Google argues that claims 1, 3, 5, 10, 12, 18, 19, 21, and 24 are
`
`unpatentable under 35 U.S.C. § 101. Pet. 1. Google also provides the
`
`Declaration of Dr. Justin Tygar (“Tygar Declaration,” Ex. 1002).
`
`C. Related Matters
`
`In Apple Inc. v Smartflash LLC, Case CBM2015-00121, slip op. at 24
`
`(PTAB Nov. 10, 2015) (Paper 8) (“Apple CBM Decision on Institution”) we
`
`instituted a covered business method patent review of claims 1–28 of the
`
`’516 patent.
`
`Google indicates that the ’516 patent has been asserted against it in
`
`Smartflash LLC v. Google, Inc., Case No. 6:14-cv-435 (E.D. Tex.). Pet. 12.
`
`
`1 Petitioner filed a Motion to Seal and Entry of Protective Order with the
`Petition requesting that portions of the Petition relating to Patent Owner’s
`infringement contentions in the underlying litigation be redacted and filed
`under seal. Paper 4, 1; see 37 C.R.F. § 42.55. All citations here are to the
`Redacted Petition.
`
`2
`
`
`
`
`
`Case CBM2015-00143
`Patent 8,794,516 B2
`
`
`In addition, Google is not a party to the following actions asserting the ’516
`
`patent: Smartflash LLC, et al. v. Amazon.com, Inc., No. 6:14-cv-992 (E.D.
`
`Tex.), and Smartflash LLC, et al. v. Apple Inc., No. 6:15-cv-145 (E.D. Tex.).
`
`Id.
`
`Google also identifies other patent applications to which the ’516
`
`patent claims priority and multiple previously filed Apple CBM petitions.
`
`Pet. 12.
`
`II. ANALYSIS
`
`The Decision to Institute is discretionary. See 35 U.S.C. § 324(a).
`
`In particular, in a Decision to Institute, under 35 U.S.C. § 325(d), the Board
`
`may take into account and reject a petition because “the same or
`
`substantially the same prior art or argument previously were presented to
`
`the Office.” 35 U.S.C. § 325 (d); see also 37 C.F.R. § 42.222(a) (“Where
`
`another matter involving the patent is before the Office, the Board may
`
`during pendency of the post-grant review enter any appropriate order
`
`regarding the additional matter including providing for the stay, transfer,
`
`consolidation, or termination of any such matter.”).
`
`Each of the grounds advanced in the instant Petition previously were
`
`considered in the Apple CBM Decision on Institution.2 Specifically, we
`
`instituted a covered business method patent review of claims 1–28 under 35
`
`U.S.C. § 101 in the Apple CBM. Apple CBM, slip. op. at 24. The present
`
`Petition challenges a subset of claims 1–28, i.e., 1, 3, 5, 10, 12, 18, 19, 21,
`
`and 24, on the same § 101 ground. Pet. 1. Thus, we agree with Smartflash
`
`
`2 The Petition in the Apple CBM asserted additional grounds not at issue
`here.
`
`3
`
`
`
`
`
`Case CBM2015-00143
`Patent 8,794,516 B2
`
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`that the § 101 ground asserted here is duplicative of the grounds asserted in the
`
`Apple CBM. Prelim. Resp. 7.
`
`We determine that the present petition raises the “same or
`
`substantially the same prior art or arguments” previously presented in the
`
`Apple CBM. We exercise our discretion under 35 U.S.C. § 325(d) and
`
`decline to institute a covered business method patent review of claims 1, 3,
`
`5, 10, 12, 18, 19, 21, and 24 in this case under the same ground as asserted in
`
`the Apple CBM.
`
`In making our determination we are cognizant that Google supports
`
`its Petition with the Tygar Declaration, a different witness than relied on in
`
`the Apple CBM. That Google cites to different factual support is an
`
`insufficient difference to cause us to institute a new trial.
`
`We have reviewed the Tygar Declaration and find that, as relevant
`
`here, it is directed to the same grounds as presented in the Apple CBM, i.e.,
`
`patent eligible subject matter under 35 U.S.C. § 101. Ex. 1002 ¶¶ 51–62.
`
`As such, the Tygar Declaration is cumulative of arguments already made in
`
`the Apple CBM. Specifically, the Tygar Declaration contends the claims of
`
`the ’516 patent “are directed to the abstract idea of controlling access to
`
`something based on one or more conditions (such as payment).” Id. at ¶ 53.
`
`The Tygar Declaration also analyzes whether or not the ’516 patent includes
`
`an inventive concept that is significantly more than an abstract idea. Id. at
`
`¶¶ 56–61. In making the analysis, the Tygar Declaration includes testimony
`
`that “claims 1, 3, 5, 10, 12, 18, 19, 21, and 24 recite the use of a general
`
`purpose computer to perform routine, conventional, well-known computer
`
`functions.” Id. at ¶ 61. Dr. Tygar concludes claims 1, 3, 5, 10, 12, 18, 19,
`
`
`
`4
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`
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`Case CBM2015-00143
`Patent 8,794,516 B2
`
`
`21, and 24 are “not directed to patent eligible subject matter and are thus
`
`invalid.” Id. at ¶ 62. In our Apple CBM Decision on Institution, we
`
`considered these issues in our analysis of Alice Corp. Pty, Ltd. v. CLS Bank
`
`Int’l, 134 S. Ct. 2347 (2014). See Apple CBM Decision on Institution, slip.
`
`op. at 10–20.
`
`For the foregoing reasons, we exercise the discretion granted
`
`under 35 U.S.C. § 325(d) to deny the Petition.
`
`III. ORDER
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the Petition is denied and no covered business
`
`method patent review is instituted.
`
`
`
`
`
`
`
`5
`
`
`
`Case CBM2015-00143
`Patent 8,794,516 B2
`
`
`FOR PETITIONER GOOGLE:
`
`Raymond Nimrod
`raynimrod@quinnemanuel.com
`
`Andrew Holmes
`QE-SF-PTAB-Service@quinnemanuel.com
`
`
`
`
`
`FOR PATENT OWNER SMARTFLASH:
`
`Michael Casey
`smartflash-CBM@dbjg.com
`
`Wayne Helge
`whelge@davidsonberquist.com
`
`6
`
`
`
`
`
`
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