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`Paper 65
`Entered: May 22, 2018
`
`Trials@uspto.gov
`571-272-7822
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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 IPR2017-00701
`Patent 7,421,032 B2
`____________
`
`
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`BARRETT, Administrative Patent Judge.
`
`
`ORDER
`Granting Joint Motion to Limit the Petition
`37 C.F.R. §§ 42.1(b), 42.71
`
`
`
`
`
`IPR2017-00701
`Patent 7,421,032 B2
`
`
`The Institution Decision in this case instituted trial on some but not all
`of the challenged claims. 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 3). 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 claims 2 and 3 of U.S. Patent
`No. 7,421,032 from this proceeding, and limit the petition in the present
`inter partes review to claims 1 and 4-10.” Id. at 3. Removing claims and
`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 claims and ground of unpatentability are removed from
`dispute in this proceeding:
`References
`
`Basis
`
`Claims Challenged
`
`Ping, MacKay, Divsalar, and
`Luby97
`
`
`
`
`
`
`35 U.S.C. § 103(a)
`
`2 and 3
`
`2
`
`
`
`IPR2017-00701
`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 ground of unpatentability:
`References
`Basis
`
`Claims Challenged
`
`35 U.S.C. § 103(a)
`
`1 and 4–10
`
`Ping, MacKay, Divsalar, and
`Luby97
`
`
`
`
`
`
`3
`
`
`
`IPR2017-00701
`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
`
`