`
`Paper 60
`Entered: May 3, 2018
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`____________
`
`Case IPR2017-00701
`Patent 7,421,032 B2
`____________
`
`
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2017-00701
`Patent 7,421,032 B2
`
`
`
`Apple Inc. (“Petitioner”) filed a Petition requesting inter partes
`
`review of U.S. Patent No. 7,421,032 B2 (“the ’032 patent,” Ex. 1001).
`
`Paper 3. The Petition challenged the patentability of claims 1–10 of the ’032
`
`patent on the ground of obviousness under 35 U.S.C. § 103. California
`
`Institute of Technology (“Patent Owner”) filed a Preliminary Response to
`
`the Petition. Paper 13.
`
`On August 8, 2017, an inter partes review was instituted on
`
`Petitioner’s obviousness challenge of claims 1 and 4–10 based on Ping,
`
`MacKay, Divsalar, and Luby97. Paper 14. However, the instituted review
`
`did not include Petitioner’s obviousness challenge of claims 2 and 3 based
`
`on those same references.
`
`On April 24, 2018, the Supreme Court held that a decision to institute
`
`under 35 U.S.C. § 314 may not institute on less than all claims challenged in
`
`the petition. SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S.
`
`Apr. 24, 2018). In our Decision on Institution, we determined that Petitioner
`
`demonstrated a reasonable likelihood that it would establish that at least one
`
`of the challenged claims of the ’032 patent is unpatentable. Paper 14, 22–
`
`23. We modify our institution decision to institute on all of the challenged
`
`claims and all of the grounds presented in the Petition. See Guidance on the
`
`Impact of SAS on AIA Trial Proceedings (April 26, 2018), available at
`
`https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
`
`board/trials/guidance-impact-sas-aia-trial.
`
`The oral argument in this matter currently is scheduled for Tuesday,
`
`May 8, 2018. The parties shall confer to discuss the impact, if any, of this
`
`Order on the current schedule. If, after conferring, the parties wish to
`
`2
`
`
`
`IPR2017-00701
`Patent 7,421,032 B2
`
`
`change the schedule or submit further briefing, the parties either must, no
`
`later than 1 pm ET on Friday, May 4, 2018, request a conference call with
`
`the panel to seek authorization for such changes or briefing, or must be
`
`prepared to discuss the matter at the hearing currently scheduled for May 8,
`
`2018.
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that our institution decision is modified to include review
`
`of all challenged claims and all grounds presented in the Petition; and
`
`FURTHER ORDERED that Petitioner and Patent Owner shall confer
`
`to determine whether they desire any changes to the schedule or any further
`
`briefing, and, if so, shall, in accordance with the instructions above, request
`
`a conference call with the panel to seek authorization for such changes or
`
`briefing or shall be prepared to discuss the matter at the May 8, 2018,
`
`hearing.
`
`
`
`3
`
`
`
`IPR2017-00701
`Patent 7,421,032 B2
`
`
`PETITIONERS:
`
`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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