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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Apple Inc.,
`Petitioner
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`v.
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`California Institute of Technology
`Patent Owner
`
`
`IPR2017-00701
`U.S. Patent No. 7,421,032
`
`
`JOINT MOTION TO LIMIT PETITION
`PURSUANT TO 37 C.F.R § 42.71
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`
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`IPR2017-00701
`U.S. Patent No. 7,421,032
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`Pursuant to 37 C.F.R. § 42.71 and the Board’s Order dated May 8, 2018,
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`Petitioner, Apple Inc., and Patent Owner, California Institute of Technology,
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`jointly request that the Board limit the petition in inter partes review IPR2017-
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`00701 of U.S. Patent No. 7,421,032 to the originally instituted claims 1 and 4-10.
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`The parties respectfully request that the Board remove claims 2 and 3 from this
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`proceeding such that claims 2 and 3 are not subject to a final written decision.
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`II.
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`STATEMENT OF FACTS
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`Petitioner filed a petition for inter partes review of claims 1-10 of U.S.
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`Patent No. 7,421,032. The Board instituted review of claims 1 and 4-10 on August
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`8, 2017. Claims 2 and 3 were not instituted. No alternate grounds were denied.
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`On April 24, 2018, the Supreme Court held that a decision to institute may
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`not institute on less than all claims challenged in the petition. SAS Inst., Inc. v.
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`Iancu, 2018 WL 1914661, at *10 (U.S. Apr. 24, 2018). On May 3, 2018, the
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`Board modified the institution decision to institute on all challenged claims and all
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`grounds presented in the petition. At oral argument on May 8, 2018, the parties
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`notified the Board of their agreement to jointly withdraw the originally non-
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`
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`IPR2017-00701
`U.S. Patent No. 7,421,032
`instituted claims and grounds in IPR2017-00701 and related cases1 such that they
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`shall not be subject to a final written decision. The Board subsequently authorized
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`this motion in its order on May 8, 2018.
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`III. SUMMARY
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`In light of the above, Petitioner and Patent Owner respectfully request that
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`the Board remove claims 2 and 3 of U.S. Patent No. 7,421,032 from this
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`proceeding, and limit the petition in the present inter partes review to claims 1 and
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`4-10.
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`Dated: May 15, 2018
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`Respectfully Submitted,
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`/Michael Smith/
`Michael H. Smith (No. 71,190)
`Counsel for Petitioner
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`/Matthew Argenti/
`Matthew Argenti (No. 61,836)
`Counsel for Patent Owner
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`
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`
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`1 IPRs 2017-00210, -00219, -00297, and -00700. Related case IPR2017-00728
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`was instituted in full.
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`
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`IPR2017-00701
`U.S. Patent No. 7,421,032
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`CERTIFICATE OF SERVICE
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`I hereby certify that on May 15, 2018, I caused a true and correct copy of the
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`foregoing materials:
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` Joint Motion to Limit Petition
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`to be served via electronic mail on the following correspondents of record as listed
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`in Patent Owners’ Mandatory Notices:
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`Michael Rosato (mrosato@wsgr.com)
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`Matthew Argenti (margenti@wsgr.com)
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`Richard Torczon (rtorczon@wsgr.com)
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`/Kelvin Chan/
`Kelvin Chan
`Registration No. 71,433
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