`Tel: 571.272.7822
`
`
`Paper 37
`Entered: May 4, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`IMAGE PROCESSING TECHNOLOGIES LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00336
`Patent 6,959,293 B2
`____________
`
`
`
`Before JONI Y. CHANG, MICHAEL R. ZECHER, and
`JESSICA C. KAISER, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`
`
`IPR2017-00336
`Patent 6,959,293 B2
`
`
`Petitioner filed a Petition requesting an inter partes review of
`
`claims 1, 18, 19, 22, and 29 (“the challenged claims”) of U.S. Patent
`
`No. 6,959,293 B2 (Ex. 1001). Paper 2 (“Pet.”). Patent Owner filed a
`
`Preliminary Response. Paper 6.
`
`In its Petition, Petitioner asserts the following grounds of
`
`unpatentability (Pet. 3):
`
`Challenged Claims
`
`Basis
`
`References
`
`1, 18, 19, 22, and 29
`
`§ 103(a)
`
`Pirim alone1 or in combination with
`Tomitaka
`
`1, 18, 19, 22, and 29
`
`§ 103(a) Rogers and Gilbert
`
`1, 18, 19, 22, and 29
`
`§ 103(a) Tomitaka and Rogers
`
`
`
`Upon review of the Petition and Preliminary Response, we determined
`
`that the information presented in the Petition established that there was a
`
`reasonable likelihood that Petitioner would prevail with respect to
`
`challenging claim 22, but not with respect to challenging claims 1, 18, 19,
`
`and 29. Paper 15, 53. Consequently, on May 25, 2017, we entered an
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`Institution Decision, instituting an inter partes review only as to claim 22,
`
`but not with respect to claims 1, 18, 19, and 29, and for the sole ground that
`
`claim 22 is unpatentable under § 103(a) as obvious over Pirim. Id.
`
`On April 24, 2018, the Supreme Court of the United States held that a
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`decision to institute under 35 U.S.C. § 314 may not institute on less than all
`
`claims challenged in the petition. SAS Institute Inc. v. Iancu, 2018 WL
`
`1914661, at *10 (U.S. Apr. 24, 2018). In light of the Guidance on the
`
`
`1 Petitioner’s substantive analysis for claim 22 relies upon Pirim alone.
`Pet. 49–51.
`
`2
`
`
`
`IPR2017-00336
`Patent 6,959,293 B2
`
`Impact of SAS on AIA Trial Proceedings posted on April 26, 2018 (at
`
`https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
`
`board/trials/guidance-impact-sas-aia-trial), we modify our Institution
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`Decision to institute on all of the challenged claims and all of the grounds
`
`presented in the Petition.
`
`On May 1, 2018, a conference call was held between respective
`
`counsel for the parties and Judges Chang, Zecher, and Kaiser, to discuss
`
`whether the parties would request additional briefing and/or schedule
`
`adjustments based on SAS. We discussed the procedural posture of the
`
`instant proceeding, noting that an oral hearing was held on
`
`February 21, 2018, and the final written decision is due in less than a month,
`
`on May 25, 2018, unless the 1-year statutory time period is extended. Upon
`
`inquiry, both parties affirmatively waived additional briefing and schedule
`
`adjustments.
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that our Institution Decision (Paper 15) is modified to
`
`include review of all of the challenged claims and all of the grounds
`
`presented in the Petition (Pet. 3, 49−51):
`
`Challenged Claims
`
`Basis
`
`References
`
`22
`
`§ 103(a) Pirim alone
`
`1, 18, 19, and 29
`
`§ 103(a) Pirim in combination with Tomitaka
`
`1, 18, 19, 22, and 29
`
`§ 103(a) Rogers and Gilbert
`
`1, 18, 19, 22, and 29
`
`§ 103(a) Tomitaka and Rogers
`
`
`
`
`3
`
`
`
`IPR2017-00336
`Patent 6,959,293 B2
`
`
`
`
`For PETITIONER:
`
`Nicholas Whilt
`John Kappos
`Marc Pensabene
`Brian Cook
`Clarence Rowland
`O’MELVENY & MYERS LLP
`nwhilt@omm.com
`jkappos@omm.com
`mpensabene@omm.com
`bcook@omm.com
`crowland@omm.com
`
`
`For PATENT OWNER:
`
`Chris Coulson
`BUNSOW DE MORY LLP
`ccoulson@bdiplaw.com
`
`
`
`
`
`
`
`4
`
`
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