`Tel: 571-272-7822
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` Paper 11
` Entered: June 10, 2013
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ABB, INC.
`Petitioner
`
`v.
`
`ROY-G-BIV CORPORATION
`Patent Owner
`____________
`
`Case IPR2013-00282 (Patent 6,516,236)
`Case IPR2013-00286 (Patent 8,073,557)1
`____________
`
`Before THOMAS L. GIANNETTI, BRYAN F. MOORE, and
`JENNIFER S. BISK, Administrative Patent Judges.
`
`BISK, Administrative Patent Judge.
`
`
`DECISION
`Motion to Limit Petition
`37 C.F.R. § 42.71
`
`
`
`
`
`1 This Order addresses similar issues in both cases. The parties are not authorized
`to use this caption for any subsequent papers without authorization from the Board.
`
`
`
`IPR2013-000282 (Patent 6,516,236)
`IPR2013-000286 (Patent 8,073,557)
`
`
`
`
`On June 6, 2013, ABB filed motions (Paper 10) to limit the petitions in these
`
`proceedings to a small subset of the claims and grounds originally asserted. The
`remaining challenges are as follows:
`1) Claims 5 and 6 of US Patent 6,515,236 are obvious over Gertz, Stewart,
`Morrow, DDAG, and Brockschmidt;
`2) Claim 7 of US Patent 6,515,236 is obvious over Gertz, Stewart, Morrow,
`DDAG, and HP86; and
`3) Claims 26, 29, 30, and 46-59 of US Patent 8,073,557 are obvious over
`Gertz, Stewart, Morrow, Brockschmidt, and Architect.
`These challenges consist mainly of references and combinations that were also
`asserted in the two related cases that were instituted on April 18, 2013—IPR2013-
`00062 and IPR2013-00074.
`
`As discussed in the conference call held May 29, 2013 (summarized in Paper
`6), limiting the petitions in this manner significantly reduces Patent Owner’s
`burden in responding to the petitions. Therefore, we will shorten Patent Owner’s
`time to file preliminary responses to these petitions.
`Accordingly, it is
`
`ORDERED that Petitioner’s Motions to Limit the Petition in these
`
`proceedings are GRANTED;
`
`FURTHER ORDERED that the petitions in these proceedings are limited to
`the claims and grounds listed above; and
`FURTHER ORDERED that Patent Owner’s Preliminary Response in both
`
`cases shall be due no later than June 24, 2013.
`
`
`
`
`2
`
`
`
`
`IPR2013-000282 (Patent 6,516,236)
`IPR2013-000286 (Patent 8,073,557)
`
`
`
`PETITIONER:
`
`Richard D. McLeod
`Michael D. Jones
`Klarquist Sparkman LLP
`rick.mcleod@klarquist.com
`michael.jones@klarquist.com
`
`PATENT OWNER:
`
`Richard T. Black
`Joel B. Ard
`Foster Pepper PLLC
`blacr@foster.com
`ardjo@foster.com
`
`
`
`3
`
`
`
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