`571-272-7822
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`Paper 65
`Entered: May 22, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`____________
`
`Case IPR2017-00700
`Patent 7,421,032 B2
`____________
`
`
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`ORDER
`Granting Joint Motion to Limit the Petition
`37 C.F.R. §§ 42.1(b), 42.71
`
`
`
`
`
`IPR2017-00700
`Patent 7,421,032 B2
`
`
`The Institution Decision in this case instituted trial on some but not all
`of the challenged claims and some but not all of the challenged grounds.
`Paper 14. Subsequently, on April 24, 2018, the Supreme Court held that a
`decision to institute under 35 U.S.C. § 314 may not institute on fewer than
`all claims challenged in the petition. SAS Inst., Inc. v. Iancu, 2018 WL
`1914661, at *10 (U.S. Apr. 24, 2018). By our Order of May 3, 2018, we
`modified our institution decision in light of SAS to institute trial on all of the
`challenged claims and all of the grounds presented in the Petition (Paper 5).
`Paper 60.
`
`As authorized by our Order of May 8, 2018 (Paper 63), the parties
`filed a Joint Motion to Limit the Petition. Paper 64. Specifically, the parties
`requested “that the Board remove claim 17 of U.S. Patent No. 7,421,032
`from this proceeding, and limit the petition in the present inter partes review
`to claims 11-16.” Id. at 3. Removing grounds from dispute, pursuant to a
`joint request of the parties, serves our overarching goal of resolving this
`consolidated proceeding in a just, speedy, and inexpensive manner.
`37 C.F.R. § 42.1(b).
`Accordingly, we grant the Joint Motion to Limit the Petition. As
`such, the following claim and ground of unpatentability is removed from
`dispute in this proceeding:
`References
`
`Basis
`
`Claim Challenged
`
`Ping, MacKay, Divsalar, and
`Pfister Slides
`
`
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`
`
`35 U.S.C. § 103(a)
`
`17
`
`2
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`
`
`IPR2017-00700
`Patent 7,421,032 B2
`
`
`It is:
`ORDERED that the Joint Motion to Limit the Petition is granted; and
`FURTHER ORDERED that the Petition is limited to the following
`claims and grounds of unpatentability:
`References
`Basis
`
`Ping, MacKay, and Divsalar 35 U.S.C. § 103(a)
`
`Claim(s)
`Challenged
`11, 12, and 14–16
`
`35 U.S.C. § 103(a)
`
`13
`
`Ping, MacKay, Divsalar, and
`Luby97
`
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`3
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`
`
`IPR2017-00700
`Patent 7,421,032 B2
`
`PETITIONER:
`Richard Goldenberg
`Richard.goldenberg@wilmerhale.com
`
`Michael Smith
`Michaelh.smith@wilmerhale.com
`
`Dominic Massa
`Dominic.massa@wilmerhale.com
`
`Kelvin Chan
`Kelvin.chan@wilmerhale.com
`
`PATENT OWNER:
`Michael Rosato
`mrosato@wsgr.com
`
`Matthew Argenti
`margenti@wsgr.com
`
`Richard Torczon
`rtorczon@wsgr.com
`
`
`4
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`