`U.S. Patent No. 9,015,883
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FREDMAN BROS. FURNITURE COMPANY, INC.
`Petitioner
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`v.
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`BEDGEAR, LLC
`Patent Owner
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`____________
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`IPR2017-00351
`U.S. Patent No. 9,015,883
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`JOINT MOTION TO LIMIT THE PETITION
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`Joint Motion to Limit the Petition, IPR2017-00351
`U.S. Patent No. 9,015,883
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`Pursuant to the Board’s Order dated May 10, 2018 (paper 38), Petitioner
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`Fredman Bros. Furniture Company, Inc. and Patent Owner Bedgear, LLC
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`hereby jointly move for an order to limit the grounds in this proceeding to those
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`instituted in accordance with the Decision on Institution of Inter Partes Review
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`dated June 13, 2017 (Paper 8) (“Institution Decision”).
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`In the Institution Decision, the Board instituted this proceeding as to all
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`claims challenged in the Petition (Paper 1) based on a portion of the grounds
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`raised in the Petition (“Originally Instituted Grounds”).1 In turn the Board
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`denied institution as to certain grounds contained in the Petition in the
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`Institution Decision. Following the Institution Decision, the parties completed
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`discovery and briefing, and oral argument was held on March 20, 2018. The
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`Board has not yet issued a final written decision.
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`On May 2, 2018, the Board issued an Order (Paper 37) in response to the
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`U.S. Supreme Court’s April 24, 2018 decision in SAS Institute Inc. v. Iancu, 138
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`S. Ct. 1348 (2018). In that Order, the Board modified its Institution Decision to
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`institute on all of the grounds presented in the Petition and directed the parties
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`to meet and confer to discuss the impact of the Board’s modification to the
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`Institution Decision. The parties reached agreement to limit this proceeding to
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`1 For the avoidance of doubt, the term “Originally Instituted Grounds,” as used
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`herein, means the grounds that were instituted by the Board in its original
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`Institution Decision, as set forth on pages 31-32 thereof. (Paper 8, pp. 31-32).
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`Page 1 of 4
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`Joint Motion to Limit the Petition, IPR2017-00351
`U.S. Patent No. 9,015,883
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`the Originally Instituted Grounds and sought authorization to file this Joint
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`Motion in an e-mail to the Board dated May 9, 2018. The Board authorized the
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`filing of this Motion in its order dated May 10, 2018 (Paper 38).
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`“Removing grounds from a dispute, pursuant to a joint request of the
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`parties, serves [the] overarching goal of resolving this proceeding in a just,
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`speedy, and inexpensive manner.” Cascades Canada ULC et al. v. Essity
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`Hygiene and Health AB, IPR2017-01921, Paper 20, at 3 (PTAB May 15, 2018)
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`(citing 37 C.F.R. § 42.1(b) and granting, after institution, a joint motion to limit
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`the petition); see also Apotex Inc., v. OSI Pharms., Inc., IPR2016-01284, Paper
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`19 (PTAB Apr. 3, 2017) (granting, after institution, a joint motion to limit the
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`petition by removing a patent claim that was included for trial in the institution
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`decision); SAS, 138 S. Ct. at 1357.
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`In view of the original Institution Decision instituting trial as to all
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`challenged claims, the current stage of the proceeding having completed
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`depositions, briefing, and oral argument, and the parties’ desire to resolve this
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`proceeding in a “just, speedy, and inexpensive” manner, the parties now jointly
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`move to limit this proceeding to the Originally Instituted Grounds. 37 C.F.R. §
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`42.1(b). Based on at least the above considerations, the parties submit that
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`reducing the number of grounds at issue in the proceeding promotes efficient
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`use of the Board’s and parties’ resources.
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`Page 2 of 4
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`Joint Motion to Limit the Petition, IPR2017-00351
`U.S. Patent No. 9,015,883
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`Therefore, the parties respectfully request that the Board enter an order to
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`limit the Petition to the Originally Instituted Grounds.
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`Dated: May 17, 2018
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`Respectfully submitted,
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`BY:
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` /s/ Jason R. Mudd
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`Jason R. Mudd, Reg. No. 57,700
`Eric A. Buresh, Reg. No. 50,394
`ERISE IP, P.A.
`7015 College Blvd., Suite 700
`Overland Park, KS 66211
`P: (913) 777-5600
`F: (913) 777-5601
`jason.mudd@eriseip.com
`eric.buresh@eriseip.com
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`ATTORNEYS FOR PETITIONER
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`BY:
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` /s/ Joseph J. Richetti
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`Joseph J. Richetti, Reg. No. 47,024
`Alexander Walden, pro hac vice
`Frank M. Fabiani, Reg. No. 75,934
`BRYAN CAVE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`P: (212) 541-1092
`joe.richetti@bryancave.com
`alexander.walden@bryancave.com
`frank.fabiani@bryancave.com
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`ATTORNEYS FOR PATENT OWNER
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`Page 3 of 4
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`Joint Motion to Limit the Petition, IPR2017-00351
`U.S. Patent No. 9,015,883
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, I hereby certify that a true copy of the
`foregoing document was served via electronic mail this 17th day of May 2018,
`in its entirety on the following lead and back-up counsel for Patent Owner,
`BEDGEAR, LLC:
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`Joseph J. Richetti
`Alexander Walden
`Frank Fabiani
`Bryan Cave LLP
`1290 Avenue of the Americas
`New York, NY 10104
`joe.richetti@bryancave.com
`alexander.walden@bryancave.com
`frank.fabiani@bryancave.com
`PTAB-NY@bryancave.com
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` /s/ Jason R. Mudd
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`Jason R. Mudd, Reg. No. 57,700
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`BY:
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`ATTORNEY FOR PETITIONER
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`Page 4 of 4
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