`
`Paper 64
`Entered: May 17, 2018
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`____________
`
`Case IPR2017-002971
`Patent 7,916,781 B2
`____________
`
`
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`ORDER
`Granting Joint Motion to Limit the Petitions
`37 C.F.R. §§ 42.1(b), 42.71
`
`
`
`
`1 Case IPR2017-00423 has been consolidated with this proceeding.
`
`
`
`IPR2017-00297
`Patent 7,916,781 B2
`
`
`
`The Institution Decisions in this consolidated case instituted trial on
`some but not all of the challenged claims and some but not all of the
`challenged grounds. Papers 16, 18. Subsequently, 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 Inst.,
`Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S. Apr. 24, 2018). By our Order
`of May 2, 2018, we modified our institution decisions in light of SAS to
`institute trial on all of the challenged claims and all of the grounds presented
`in the Petitions from IPR2017-00297 (Paper 5) and IPR2017-00423
`(Paper 5). Paper 61.
`As authorized by our Order of May 8, 2018 (Paper 62), the parties
`filed a Joint Motion to Limit the Petitions. Paper 63. Specifically, the
`parties requested
`that the Board remove claims 3-12 and 17 of U.S. Patent
`No. 7,916,781 and alternate grounds for claims 19, 20, and 21
`from this proceeding, and limit the petition[s] in the present
`inter partes review to grounds that claims 13-15, 18, and 22 are
`rendered obvious by the combination of Ping and MacKay,
`claim 16 is rendered obvious by the combination of Ping,
`MacKay, and Coombes, and claims 19-21 are anticipated by
`Ping.
`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).
`
`2
`
`
`
`IPR2017-00297
`Patent 7,916,781 B2
`
`
`
`Accordingly, we grant the Joint Motion to Limit the Petitions. As
`such, the following claims and grounds of unpatentability are removed from
`dispute in this consolidated proceeding:
`Reference(s)
`Basis
`
`Claim(s)
`Challenged
`Ping and Divsalar 35 U.S.C. § 103(a) 3, 5–8, 10,
`and 12
`35 U.S.C. § 103(a) 9
`
`Ping, Divsalar,
`and MacKay
`Ping, Divsalar,
`and Coombes
`Ping and MacKay 35 U.S.C. § 103(a) 17, 19–21
`
`35 U.S.C. § 103(a) 4 and 11
`
`Petition
`
`IPR2017-00297,
`Paper 5
`IPR2017-00297,
`Paper 5
`IPR2017-00297,
`Paper 5
`IPR2017-00423,
`Paper 5
`
`
`Accordingly, it is:
`ORDERED that the Joint Motion to Limit the Petitions is granted;
`
`and
`
`FURTHER ORDERED that the Petitions are limited to the following
`claims and grounds of unpatentability:
`Reference(s)
`Basis
`
`Petition
`
`Claim(s)
`Challenged
`35 U.S.C. § 102(b) 19–21
`
`Ping
`
`Ping and MacKay 35 U.S.C. § 103(a) 13–15, 18,
`and 22
`35 U.S.C. § 103(a) 16
`
`Ping, MacKay,
`and Coombes
`
`
`
`
`
`
`3
`
`IPR2017-00297,
`Paper 5
`IPR2017-00423,
`Paper 5
`IPR2017-00423,
`Paper 5
`
`
`
`IPR2017-00297
`Patent 7,916,781 B2
`
`
`For PETITIONER:
`Richard Goldenberg
`Dominic E. Massa
`Michael Smith
`Kelvin Chan
`WILMER CUTLER PICKERING HALE AND DORR LLP
`richard.goldenberg@wilmerhale.com
`dominic.massa@wilmerhale.com
`michaelh.smith@wilmerhale.com
`kelvin.chan@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
`
`
`4
`
`
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