`571-272-7822
`
`
`
`
`
`
`
`
`Paper 63
`Date: May 8, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`v.
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`_______________
`
`Cases IPR2017-00210 and IPR2017-00219 (Patent 7,116,710 B1);
`Case IPR2017-002971 (Patent 7,916,781 B2);
`Cases IPR2017-00700 and IPR2017-00701 (Patent 7,421,032 B2)2
`_______________
`
`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
`
`
`
`
`1 Case IPR2017-00423 has been consolidated with IPR2017-00297.
`2 This order addresses issues that are the same in the identified cases. We
`exercise our discretion to issue one order to be filed in each case. The
`parties are not authorized to use this style of heading.
`
`
`
`IPR2017-00210, IPR2017-00219 (Patent 7,116,710 B1)
`IPR2017-00297 (Patent 7,916,781 B2)
`IPR2017-00700 and IPR2017-00701 (Patent 7,421,032 B2)
`
`
`The Institution Decisions in the above-captioned cases instituted trial
`on some but not all of the challenged claims and grounds.3 Subsequently, 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). On May 2 and 3, 2018, we modified our institution decisions to
`institute on all of the challenged claims and all of the grounds presented in
`each respective Petition.
`We held oral argument in IPR2017-00700, IPR2017-00701, and
`IPR2017-00728 on May 8, 2018, as scheduled. At the oral argument, the
`parties represented that they had reached an agreement and that they jointly
`request that the originally non-instituted claims and grounds be withdrawn
`from the proceedings in all of the above-captioned cases. In light of these
`representations, the Board authorizes the parties to file in each respective
`case, within one week of the date of this Order, a Joint Motion to Limit the
`Petition by removing the claims and grounds upon which we did not institute
`review in the original Decision on Institution. See, e.g., Apotex Inc., v. OSI
`Pharms., Inc., Case IPR2016-01284 (PTAB Apr. 3, 2017) (Paper 19)
`(granting, after institution, a joint motion to limit the petition by removing a
`patent claim that was included for trial in the institution decision).
`Accordingly, it is:
`ORDERED that the parties are authorized to file in each case, within
`one week of the date of this Order, a Joint Motion to Limit the Petition by
`
`
`3 In related case IPR2017-00728, we instituted trial on all of the challenged
`claims and on the sole asserted ground.
`
`2
`
`
`
`IPR2017-00210, IPR2017-00219 (Patent 7,116,710 B1)
`IPR2017-00297 (Patent 7,916,781 B2)
`IPR2017-00700 and IPR2017-00701 (Patent 7,421,032 B2)
`
`removing the claims and grounds upon which we did not institute review in
`the original Decision on Institution.
`
`
`
`
`
`
`
`3
`
`
`
`IPR2017-00210, IPR2017-00219 (Patent 7,116,710 B1)
`IPR2017-00297 (Patent 7,916,781 B2)
`IPR2017-00700 and IPR2017-00701 (Patent 7,421,032 B2)
`
`For PETITIONER:
`
`Richard Goldenberg
`Dominic E. Massa
`Michael Smith
`Kelvin Chan
`WILMER CUTLER PICKERING HALE AND DORR LLP
`richard.goldenberg@wilmerhale.com
`dominic.massa@wilmerhale.com
`michaelh.smith@wilmerhale.com
`kelvin.chan@wilmerhale.com
`
`
`For PATENT OWNER:
`
`Michael T. Rosato
`Matthew A. Argenti
`Richard Torczon
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`margenti@wsgr.com
`rtorczon@wsgr.com
`
`Todd M. Briggs
`Kevin P.B. Johnson
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`toddbriggs@quinnemanuel.com
`kevinjohnson@quinnemanuel.com
`
`
`
`
`
`
`4
`
`
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