`571-272-7822
`
`Date Entered: August 30, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ALLSTEEL INC.,
`Petitioner,
`v.
`DIRTT ENVIRONMENTAL SOLUTIONS LTD.,
`Patent Owner.
`____________
`
`Case IPR2015-01691
`Patent 8,024,901 B2
`____________
`
`Before SALLY C. MEDLEY, SCOTT A. DANIELS, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`Petitioner, Allsteel Inc., filed a Petition requesting an inter partes
`review of claims 1, 4–11, 13–23, and 25 of U.S. Patent No. 8,024,901 B2
`(Ex. 1001, “the ’901 patent”). Paper 1 (“Pet.”). Patent Owner, DIRTT
`Environmental Solutions Ltd., filed a Preliminary Response. Paper 9
`(“Prelim. Resp.”). Upon consideration of the Petition and Preliminary
`Response, we instituted an inter partes review of claims 1, 4–7, 9, 10, 14–
`20, and 25, pursuant to 35 U.S.C. § 314. Paper 10 (“Institution Decision”).
`
`
`
`
`
`
`
`IPR2015-01691
`Patent 8,024,901 B2
`
`
`We did not institute an inter partes review with respect to claims 8, 11, 13,
`and 21–23. Id.
`Per a Final Written Decision, we determined that Petitioner had
`shown by a preponderance of the evidence that claims 1, 4–7, 9, 10, 14–20,
`and 25 are unpatentable. Paper 44 (“Final Written Decision”). Patent
`Owner filed a notice of appeal with the U.S. Court of Appeals for the
`Federal Circuit (“Federal Circuit”). In the meantime, and on April 24, 2018,
`the Supreme Court held that a decision to institute under 35 U.S.C. § 314
`may not institute on fewer than all claims challenged in the petition. SAS
`Institute Inc. v. Iancu, 138 S. Ct. 1348, 1354 (2018). Accordingly, the
`Federal Circuit vacated our Final Written Decision in this proceeding and
`remanded “to allow the Board to issue a final written decision consistent
`with SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018).” DIRTT
`Environmental Solutions Ltd. v. Allsteel Inc., Case No. 17-1797, slip op. 2
`(Fed. Cir. July 23, 2018); Exs. 3001, 3002.
`In light of the Federal Circuit’s vacatur and remand, we modify our
`Institution Decision to institute on all of the challenged claims and all of the
`grounds presented in the Petition. In particular, we now institute on
`Petitioner’s assertion that claim 8 is unpatentable under 35 U.S.C. § 103(a)
`as obvious over Raith and Yu; claims 11 and 13 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Raith and EVH; and claims 21–23 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Raith and
`MacGregor.
`Based on the record of this proceeding, a conference call is scheduled
`for 2:00 PM ET on September 13, 2018. The parties shall be prepared to
`discuss (1) whether there should be further briefing and oral hearing for
`
`2
`
`
`
`
`
`
`IPR2015-01691
`Patent 8,024,901 B2
`
`
`claims 8, 11, 13, and 21–23; (2) whether either party waives any issues
`regarding claims 8, 11, 13, and 21–23; and (3) due dates, not to exceed four
`months, for taking action regarding any proposed subsequent briefing and
`oral argument regarding claims 8, 11, 13, and 21–23. The parties are
`strongly encouraged to meet and confer on these issues prior to the
`scheduled conference call in order to mutually agree as to the issues outlined
`per this order.
`It is:
`ORDERED that our Institution Decision is modified to include review
`of all challenged claims and all grounds presented in the Petition; and
`FURTHER ORDERED that a conference call is scheduled for 2:00
`PM ET, September 13, 2018, whereby the parties shall be prepared to
`discuss the issues outlined per this order.
`
`
`
`
`
`
`
`
`
`3
`
`
`
`
`
`
`IPR2015-01691
`Patent 8,024,901 B2
`
`PETITIONER:
`
`Victor P. Jonas
`Trevor Carter
`Nicholas M. Anderson
`Timothy Sullivan
`FAEGRE BAKER DANIELS
`victor.jonas@FaegreBD.com
`trevor.carter@FaegreBD.com
`nick.anderson@FaegreBD.com
`timothy.sullivan@faegrebd.com
`
`
`PATENT OWNER:
`
`Chad E. Nydegger
`Michael J. Frodsham
`David R. Todd
`WORKMAN NYDEGGER
`cnydegger@wnlaw.com
`mfrodsham@wnlaw.com
`dtodd@wnlaw.com
`
`
`
`
`
`4
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
