`571-272-7822 Entered: May 23, 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
`_______________
`
`
`Before BRIAN J. McNAMARA, JAMES B. ARPIN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`
`ORDER
`Extending One-Year Pendency for Good Cause
`35 U.S.C. § 316(a)(11) and 37 C.F.R. § 42.100(c)
`
`
`
`IPR2017-00319
`Patent 8,923,941 B2
`
`
`
`
`Apple Inc. (“Petitioner”) filed a Petition requesting inter partes
`review of claims 1–13 of U.S. Patent No. 8,923,941 B2 (Ex. 1001, “the ’941
`patent”). On June 6, 2017, the Board instituted an inter partes review of
`claims 1, 2, and 6–13 of the ’941 patent, but did not institute an inter partes
`review of claims 3–5 of the ’941 patent, and instituted an inter partes review
`on less than all of the grounds asserted in the Petition. Paper 10, 6–7, 55–56.
`Thereafter, on April 24, 2018, the U.S. Supreme Court issued its decision in
`SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018) (“SAS Institute decision”).
`The one-year period normally available to issue a Final Written Decision
`expires on June 6, 2018.
`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:
`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 here. Paper 37; 37 C.F.R.
`
`1
`
`
`
`
`
`
`IPR2017-00319
`Patent 8,923,941 B2
`
`§ 42.100(c). Accordingly, the time to administer the present proceeding is
`extended by up to six months.
`The panel and the parties held a conference call on May 4, 2018, to
`discuss the impact of the SAS Institute decision on this proceeding. We are
`entering a separate order adding claims 3–5 and the associated grounds to
`this proceeding and authorizing the parties to file limited, additional briefing
`with respect to those added claims and grounds.
`ORDER
`
`It is
`ORDERED that good cause exists to extend the time to administer
`this proceeding; and
`FURTHER ORDERED that the time to administer this proceeding is
`extended by two months until August 6, 2018.
`
`
`2
`
`
`
`
`
`
`IPR2017-00319
`Patent 8,923,941 B2
`
`For PETITIONER
`
`Michelle K. Holoubek
`Michael D. Specht
`Richard Bemben
`STERNE, KESSLER, GOLDSTEIN & FOX
`holoubek-ptab@skgf.com
`mspecht-ptab@skgf.com
`rbemben-ptab@skgf.com
`
`
`For PATENT OWNER
`
`Justin B. Kimble
`Nicholas C Kliewer
`Jonathan H. Rastegar
`BRAGALONE CONROY PC
`jkimble-ipr@bcpc-law.com
`nkliewer@bcpc-law.com
`
`
`
`3
`
`
`
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