`571.272.7822
`
` Paper No. 23
`
`
` Entered: October 18, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`
`
`
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner.
`____________
`
`Case IPR2017-002971 (Patent 7,916,781 B2)
`Case IPR2017-00700 (Patent 7,421,032 B2)
`Case IPR2017-00701 (Patent 7,421,032 B2)
`Case IPR2017-00728 (Patent 7,421,032 B2)2
`____________
`
`Before KEN B. BARRETT, TREVOR M. JEFFERSON, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`HUDALLA, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`On October 11, 2017, Patent Owner sent an email
`
`to Trials@uspto.gov requesting certain modifications to the schedules in the
`
`
`1 Case IPR2017-00423 has been consolidated with this proceeding.
`2 This Order pertains to all of these cases. Therefore, we exercise our
`discretion to issue a single Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`
`
`IPR2017-00297 (Patent 7,916,781 B2)
`IPR2017-00700 (Patent 7,421,032 B2)
`IPR2017-00701 (Patent 7,421,032 B2)
`IPR2017-00728 (Patent 7,421,032 B2)
`
`
`above-captioned proceedings. We discuss the requested modifications in
`turn.
`
`Regarding IPR2017-00297, Patent Owner requests that we move DUE
`DATE 1, the due date for Patent Owner’s Response and any motion to
`amend, to November 21, 2017. As a result of a first stipulation between the
`parties, DUE DATE 1 was set for October 26, 2017. IPR2017-00297,
`Paper 21. Patent Owner contends the extension of time is warranted because
`the decision in Aqua Products, Inc. v. Matal, No. 2015-1177, 2017 WL
`4399000 (Fed. Cir. Oct. 4, 2017) (en banc), “brought a significant change to
`the standard governing motions to amend.” Accordingly, Patent Owner
`requests the extra time “to assess whether Caltech will file a motion to
`amend and to allow sufficient time to prepare such a motion.” Petitioner
`opposes Patent Owner’s request.
`Since the time of Patent Owner’s email, the parties filed a second
`stipulation that moved DUE DATE 1 to November 9, 2017. Paper 25.
`Although we agree with Patent Owner that some extra time is warranted in
`this case for Patent Owner to consider the impact of Aqua Products, the
`parties’ second stipulation moves DUE DATE 1 commensurate with the
`amount of time the panel would have provided Patent Owner. We determine
`that the parties’ second stipulation provides Patent Owner sufficient time to
`consider its positions in the wake of Aqua Products. We decline to provide
`a further extension, because moving DUE DATE 1 to November 21, 2017,
`would have too great of an impact on the schedule of IPR2017-00297.
`Also regarding IPR2017-00297, Patent Owner requests that we move
`DUE DATE 7, the date for oral argument, to May 8, 2018. In response to
`
`2
`
`
`
`IPR2017-00297 (Patent 7,916,781 B2)
`IPR2017-00700 (Patent 7,421,032 B2)
`IPR2017-00701 (Patent 7,421,032 B2)
`IPR2017-00728 (Patent 7,421,032 B2)
`
`
`prior request from Patent Owner, we previously had moved DUE DATE 7
`back to April 19, 2018. IPR2017-00297, Paper 23. Patent Owner seeks this
`change so that IPR2017-00297 is argued at the same time as
`IPR2017-00700, IPR2017-00701, and IPR2017-00728, all of which involve
`a related patent and similar grounds of unpatentability. Petitioner opposes
`Patent Owner’s request.
`We deny Patent Owner’s request, because the additional delay in
`holding oral argument for IPR2017-00297 would jeopardize our ability to
`issue a Final Written Decision within one year of institution, as required by
`37 C.F.R. § 42.100(c). The oral argument date is already later than we had
`intended based on Patent Owner’s prior request to move DUE DATE 7.
`Finally, Patent Owner requests that we move DUE DATE 1 in each of
`IPR2017-00700, IPR2017-00701, and IPR2017-00728 to November 21,
`2017. Similar to above, Patent Owner argues that we should align these
`cases because they involve a related patent and similar grounds of
`unpatentability. Petitioner opposes Patent Owner’s request. We deny Patent
`Owner’s request because Patent Owner has not shown good cause for the
`requested changes.
`
`Accordingly, it is
`
`ORDERED that all of Patent Owner’s requests to change the
`
`schedules in these cases are denied.
`
`
`
`3
`
`
`
`IPR2017-00297 (Patent 7,916,781 B2)
`IPR2017-00700 (Patent 7,421,032 B2)
`IPR2017-00701 (Patent 7,421,032 B2)
`IPR2017-00728 (Patent 7,421,032 B2)
`
`
`
`PETITIONER:
`
`Richard Goldenberg
`Brian Seeve
`Dominic Massa
`Michael H. Smith
`WILMER, CUTLER, PICKERING, HALE AND DORR, LLP
`goldenberg@wilmerhale.com
`brian.seeve@wilmerhale.com
`dominic.massa@wilmerhale.com
`michaelh.smith@wilmerhale.com
`
`
`PATENT OWNER:
`
`Michael T. Rosato
`Matthew A. Argenti
`Richard Torczon
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`margenti@wsgr.com
`rtorczon@wsgr.com
`
`
`
`4
`
`
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