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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Apple Inc.,
`Petitioner
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`v.
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`California Institute of Technology
`Patent Owner
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`IPR2017-00210
`U.S. Patent No. 7,116,710
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`JOINT MOTION TO LIMIT PETITION
`PURSUANT TO 37 C.F.R § 42.71
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`ActiveUS 167736000
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`IPR2017-00210
`U.S. Patent No. 7,116,710
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`Pursuant to 37 C.F.R. § 42.71 and the Board’s Order dated May 8, 2018,
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`Petitioner, Apple Inc., and Patent Owner, California Institute of Technology,
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`jointly request that the Board limit the petition in inter partes review IPR2017-
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`00210 of U.S. Patent No. 7,116,710 to the originally instituted claims 1-8, 11-17,
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`19-22, and 24-33. The parties respectfully request that the Board remove claims
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`10 and 23 from this proceeding such that claims 10 and 23 are not subject to a final
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`written decision.
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`II.
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`STATEMENT OF FACTS
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`Petitioner filed a petition for inter partes review of claims 1-8, 10-17, and
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`19-33 of U.S. Patent No. 7,116,710. The Board instituted review of claims 1-8,
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`11-17, 19-22, and 24-33 on June 30, 2017. Claims 10 and 23 were not instituted.
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`No alternate grounds were denied.
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`On April 24, 2018, the Supreme Court held that a decision to institute may
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`not institute on less than all claims challenged in the petition. SAS Inst., Inc. v.
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`Iancu, 2018 WL 1914661, at *10 (U.S. Apr. 24, 2018). On May 2, 2018, the
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`Board modified the institution decision to institute on all challenged claims and all
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`grounds presented in the petition. At oral argument on May 8, 2018 for related
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`cases IPR2017-00700, IPR2017-00701, and IPR2017-00728, the parties notified
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`the Board of their agreement to jointly withdraw the originally non-instituted
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`ActiveUS 167736000
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`IPR2017-00210
`U.S. Patent No. 7,116,710
`claims and grounds in IPR2017-00210 and related cases1 such that they shall not
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`be subject to a final written decision. The Board subsequently authorized this
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`motion in its order on May 8, 2018.
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`III. SUMMARY
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`In light of the above, Petitioner and Patent Owner respectfully request that
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`the Board remove claims 10 and 23 of U.S. Patent No. 7,116,710 from this
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`proceeding, and limit the petition in the present inter partes review to claims 1-8,
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`11-17, 19-22, and 24-33.
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`Dated: May 15, 2018
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`Respectfully Submitted,
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`/Michael Smith/
`Michael H. Smith (No. 71,190)
`Counsel for Petitioner
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`/Matthew Argenti/
`Matthew Argenti (No. 61,836)
`Counsel for Patent Owner
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`1 IPRs 2017-00219, -00297, -00700, and -00701. Related case IPR2017-00728
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`was instituted in full.
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`ActiveUS 167736000
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`IPR2017-00210
`U.S. Patent No. 7,116,710
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`CERTIFICATE OF SERVICE
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`I hereby certify that on May 15, 2018, I caused a true and correct copy of the
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`foregoing materials:
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` Joint Motion to Limit Petition
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`to be served via electronic mail on the following correspondents of record as listed
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`in Patent Owners’ Mandatory Notices:
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`Michael Rosato (mrosato@wsgr.com)
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`Matthew Argenti (margenti@wsgr.com)
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`Richard Torczon (rtorczon@wsgr.com)
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`Kevin P.B. Johnson (kevinjohnson@quinnemanuel.com)
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`Todd M. Briggs (toddbriggs@quinnemanuel.com)
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`/Kelvin Chan/
`Kelvin Chan
`Registration No. 71,433
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`ActiveUS 167736000
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