`571-272-7822
`
` Paper 37
`Entered: May 22, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`VALENCELL, INC.,
`Patent Owner.
`_______________
`
`Case IPR2017-00319
`Patent 8,923,941 B2
`_______________
`
`GRANT OF GOOD CAUSE EXTENSION
`35 U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c)
`
`Pursuant to 35 U.S.C. § 316(a)(11), “the final determination in an
`inter partes review [shall] be issued not later than 1 year after the date on
`which the Director notices the institution of a review under this chapter,
`except that the Director may, for good cause shown, extend the 1-year
`period by not more than 6 months . . . .” The Director has delegated the
`authority to extend the one-year period to the Chief Administrative Patent
`Judge. See 37 C.F.R. § 42.100(c). In particular, 37 C.F.R. § 42.100(c)
`provides:
`
`
`
`IPR2017-00319
`
`Patent 8,923,941 B2
`
`An inter partes review proceeding shall be administered such
`that pendency before the Board after institution is normally no
`more than one year. The time can be extended by up to six
`months for good cause by the Chief Administrative Patent
`Judge .
`.
`.
`.
`
`In accordance with 37 C.F.R. § 42.100(c), the Chief Administrative Patent
`
`Judge has determined that good cause exists to extend the one-year period
`
`for issuing a Final Written Decision in the present proceeding.
`
`The US. Supreme Court issued its decision on April 24, 2018, in SAS
`
`Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018). Here, SAS Institute may
`
`affect the parties’ arguments and the Board’s analysis of evidence and
`
`arguments presented, particularly with respect to non—instituted claims and
`
`grounds in the Petition. Because of the potential impact of SAS Institute and
`
`the limited amount of time for the Board and parties to apply SAS Institute to
`
`this proceeding, the Chief Administrative Patent Judge has determined that
`
`good cause exists to extend the one-year period for issuing a Final Written
`
`Decision.
`
`19th
`
`David P. Ruschke
`
`Chief Administrative Patent Judge
`
`
`
`IPR2017-00319
`Patent 8,923,941 B2
`
`For PETITIONER
`
`Michelle K. Holoubek
`Michael D. Specht
`Richard Bemben
`STERNE, KESSLER, GOLDSTEIN & FOX
`holoubek-PT AB@skgf.com
`mspecht-PTAB@skgf.com
`rbemben-ptab@sternekessler.com
`
`For PATENT
` OWNER
`
`Justin B. Kimble
`
`
`Nicholas C Kliewer
`BRAGALONE CONROYPC
`JKimble-IPR@bcpc-law.com
`nkliewer@bcpc-law.com
`
`3
`
`