`Tel: 571-272-7822
`
`Paper 46
`Entered: March 18, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.|,
`Petitioner,
`
`Vv.
`
`SMARTFLASH LLC,
`Patent Owner.
`
`Case CBM2015-00018
`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 CFR. § 42.72
`
`' Apple has been dismissed asa Petitioner. Paper 37,8.
`
`
`
`Case CBM2015-00018
`Patent 7,942,317 B2
`
`On April 10, 2015, we instituted a transitional covered business
`method patent review (Paper15, “Institution Decision” or “Inst. Dec.”)
`based upon Apple’s assertion that claim 18 (“the challenged claim”)is
`
`directed to patent ineligible subject matter under 35 U.S.C. § 101. Inst. Dec.
`
`13. We subsequently dismissed Apple as a petitioner in this trial (Paper 37,
`
`8) because Apple wasthe petitioner in CBM2014-00112 that resulted in a
`final written decision with respect to claim 18, the same claim challenged in
`
`this trial. Id. at 7; see 35 U.S.C. 325(e)(1) (“The petitioner in a post-grant
`
`review of a claim in a patent underthis chapter that results in a final written
`
`decision under section 328(a), or the real party in interest or privy of the
`
`petitioner, may not request or maintain a proceeding before the Office with
`
`respect to that claim on any groundthatthe petitioner raised or reasonably
`
`could haveraised during that post-grant review.”). Thus, we determined that
`
`under 35 U.S.C. § 325(e)(1), Apple is estopped from participating further in
`
`this trial. Jd. at 2—7.
`
`Nonetheless, we decided to proceed to a Final Written Decision
`
`because § 325(e)(1) speaks only to actions that may not be undertaken by
`
`Petitioner(or its real party in interest or privy), but does not proscribe
`
`actions that may be taken by the panel. Paper 37, 5-7. On March 15, 2016,
`
`however, Patent Ownerfiled an authorized motion to terminate this
`
`proceedingstating 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
`
`|Patent Owner’s] appealof [the final written decision in CBM2014-00112
`
`determining] that claim 18 of the ’317 Patent is unpatentable.” Paper 45, 3.
`
`Weare persuadedthat the particular facts of this proceeding now
`
`counsel termination. 37 C.F.R. § 42.72. Claim 18 of the ’317 patent has
`
`
`
`Case CBM2015-00018
`Patent 7,942,317 B2
`
`been finally cancelled and any decision we might reach in this proceeding
`
`regarding the patentability of this claim would be moot and purely advisory.
`
`Wedo notsee howthejust, 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.
`
`Accordingly it is
`
`ORDER
`
`ORDEREDthat Patent Owner’s motion to terminate this proceeding
`
`is granted; and
`
`FURTHER ORDEREDthat CBM2015-00018 is terminated.
`
`
`
`Case CBM2015-00018
`Patent 7,942,317 B2
`
`PETITIONER(Dismissed):
`J. Steven Baughman
`Ching-Lee Fukuda
`ROPES & GRAY LLP
`steven.baughman@ropesgray.com
`ching-lee. fukuda@ropesgray.com
`
`PATENT OWNER:
`Michael R. Casey
`J. Scott Davidson
`DAVIDSON BERQUIST JACKSON & GOWDEY LLP
`mcasey(@dbjg.com
`jsd@dbjg.com
`
`
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