`571-272-7822
`
`
`
`
`
`
`
`
`Paper 73
`Date: June 5, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_______________
`Case IPR2017-00210
`Patent 7,116,710 B1
`_______________
`
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`The Institution Decision in this case instituted trial on some but not all
`
`of the challenged claims and some but not all of the challenged grounds.
`Paper 18. Subsequently, on April 24, 2018, the Supreme Court held that a
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`
`decision to institute under 35 U.S.C. § 314 may not institute on fewer than
`all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S. Ct.
`1348, 1359–59 (2018). By our Order of May 2, 2018, we modified our
`institution decision in light of SAS to institute trial on all of the challenged
`claims and all of the grounds presented in the Petition (Paper 5). Paper 69.
`As authorized by our Order of May 8, 2018 (Paper 70), the parties
`filed a Joint Motion to Limit the Petition. Paper 71. Specifically, the parties
`requested “that the Board remove claims 10 and 23 of U.S. Patent
`No. 7,116,710 from this proceeding, and limit the petition in the present
`inter partes review to claims 1–8, 11–17, 19–22, and 24–33.” Id. at 3.
`Removing grounds from dispute, pursuant to a joint request of the parties,
`serves our overarching goal of resolving this consolidated proceeding in a
`just, speedy, and inexpensive manner. 37 C.F.R. § 42.1(b).
`Accordingly, we grant the Joint Motion to Limit the Petition. As
`such, the following grounds of unpatentability are removed from dispute in
`this proceeding: (1) Claim 10 as unpatentable under 35 U.S.C. § 103(a) over
`Frey, Divsalar, and Pfister Slides; and (2) claim 23 as unpatentable under
`35 U.S.C. § 103(a) over Frey, Divsalar, Luby97, and Pfister Slides.
`It is:
`ORDERED that the Joint Motion to Limit the Petition is granted; and
`FURTHER ORDERED that the Petition is limited to the following
`claims and grounds of unpatentability:
`Claims 1 and 3 of U.S. Patent No. 7,116,710 B1 as anticipated by
`Frey pursuant to 35 U.S.C. § 102(b);
`Claims 1–8 and 11–14 of U.S. Patent No. 7,116,710 B1 as obvious
`over Divsalar and Frey; and
`
`2
`
`
`
`IPR2017-00210
`Patent 7,116,710 B1
`
`
`Claims 15–17, 19–22, and 24–33 of U.S. Patent No. 7,116,710 B1 as
`obvious over Divsalar, Frey, and Luby97.
`
`
`
`
`For PETITIONER:
`
`Richard Goldenberg
`Dominic E. Massa
`Michael Smith
`Kelvin Chan
`James M. Dowd
`Mark D. Selwyn
`WILMER CUTLER PICKERING HALE AND DORR LLP
`richard.goldenberg@wilmerhale.com
`dominic.massa@wilmerhale.com
`michaelh.smith@wilmerhale.com
`kelvin.chan@wilmerhale.com
`james.dowd@wilmerhale.com
`mark.selwyn@wilmerhale.com
`
`
`For PATENT OWNER:
`
`Michael T. Rosato
`Matthew A. Argenti
`Richard Torczon
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`margenti@wsgr.com
`rtorczon@wsgr.com
`
`Todd M. Briggs
`Kevin P.B. Johnson
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`toddbriggs@quinnemanuel.com
`kevinjohnson@quinnemanuel.com
`
`
`3
`
`
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