`Tel: 571.272.7822
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`Paper 36
`Entered: May 4, 2018
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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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`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
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`v.
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`IMAGE PROCESSING TECHNOLOGIES LLC,
`Patent Owner.
`____________
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`Case IPR2017-00353
`Patent 8,983,134 B2
`____________
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`
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`Before JONI Y. CHANG, MICHAEL R. ZECHER, and
`JESSICA C. KAISER, Administrative Patent Judges.
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`CHANG, Administrative Patent Judge.
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`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
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`IPR2017-00353
`Patent 8,983,134 B2
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`Petitioner filed a Petition requesting an inter partes review of claims 1
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`and 2 (“the challenged claims”) of U.S. Patent No. 8,983,134 B2 (Ex. 1001).
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`Paper 2 (“Pet.”). Patent Owner filed a Preliminary Response. Paper 6.
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`In its Petition, Petitioner asserts the following grounds of
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`unpatentability (Pet. 2−3):
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`References
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`Gilbert and Hashima
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`Hashima and Ueno
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`Ueno and Gilbert
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`Basis
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`§ 103(a)
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`§ 103(a)
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`§ 103(a)
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`Claims
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`1 and 2
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`1 and 2
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`1 and 2
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`On May 25, 2017, we entered an Institution Decision, instituting an
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`inter partes review as to all of the challenged claims based on only the
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`following two grounds: (1) obviousness ground based on Gilbert and
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`Hashima; and (2) obviousness ground based on Ueno and Gilbert.
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`Paper 12, 29-30.
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`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
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`claims challenged in the petition. SAS Institute Inc. v. Iancu, 2018 WL
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`1914661, at *10 (U.S. Apr. 24, 2018). In light of the Guidance on the
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`Impact of SAS on AIA Trial Proceedings posted on April 26, 2018 (at
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`https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
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`board/trials/guidance-impact-sas-aia-trial), we modify our Institution
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`Decision to institute on all of the grounds presented in the Petition.
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`On May 1, 2018, a conference call was held between respective
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`counsel for the parties and Judges Chang, Zecher, and Kaiser, to discuss
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`2
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`IPR2017-00353
`Patent 8,983,134 B2
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`whether the parties would request additional briefing and/or schedule
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`adjustments based on SAS. We discussed the procedural posture of the
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`instant proceeding, noting that an oral hearing was held on
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`February 21, 2018, and the final written decision is due in less than a month,
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`on May 25, 2018, unless the 1-year statutory time period is extended. Upon
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`inquiry, both parties affirmatively waived additional briefing and schedule
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`adjustments.
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`In consideration of the foregoing, it is hereby:
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`ORDERED that our Institution Decision (Paper 12) is modified to
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`include review of all of the grounds presented in the Petition (Pet. 2−3):
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`References
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`Gilbert and Hashima
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`Hashima and Ueno
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`Ueno and Gilbert
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`Basis
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`§ 103(a)
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`§ 103(a)
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`§ 103(a)
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`Claims
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`1 and 2
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`1 and 2
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`1 and 2
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`3
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`IPR2017-00336
`Patent 6,959,293 B2
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`For PETITIONER:
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`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
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`
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`For PATENT OWNER:
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`Chris Coulson
`BUNSOW DE MORY LLP
`ccoulson@bdiplaw.com
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`4
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