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`Filed: May 14, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
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`K/S HIMPP,
`Petitioner,
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`v.
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`III Holdings 4 LLC,
`Patent Owner.
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`_______________
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`Case IPR2017-00782
`Patent No. 8,654,999
`_______________
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`JOINT MOTION TO LIMIT PETITION UNDER 37 C.F.R. § 42.71
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`ActiveUS 167748628v.1
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`I.
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`STATEMENT OF RELIEF REQUESTED
`Pursuant to 37 C.F.R. § 42.71 and the Order issued May 7, 2018 authorizing
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`this motion, Petitioner K/S HIMPP and Patent Owner III Holdings 4 LLC jointly
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`request limiting the petition in inter partes review IPR2017-00782 of U.S. Patent
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`No. 8,654,999 (“the ’999 patent”) to claims 10, 11, 13–15, and 20. The parties
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`respectfully request that the Board remove claim 12 of the ’999 patent from this
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`proceeding.
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`II.
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`STATEMENT OF FACTS
`K/S HIMPP filed this petition for inter partes review on January 27, 2017
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`requesting review of claims 10-15 and 20 of the ’999 patent. The review was
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`instituted for claims 10, 11, 13-15, and 20, but not claim 12, on July 27, 2017. On
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`April 24, 2018, the Supreme Court held that a decision to institute under 35 U.S.C.
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`§ 314 may not institute on less than all claims challenged in the petition. SAS Inst.,
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`Inc. v. Iancu, 2018 WL 1914661 (U.S. Apr. 24, 2018). At the oral argument on
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`May 1, 2018, both parties requested on the record that the non-instituted claim—
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`claim 12—be withdrawn from the proceeding. The Order, issued May 7, 2018,
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`authorized the parties to file a Joint Motion to Limit the Petition by removing the
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`claim and ground not instituted in the Decision on Institution.
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`III. ARGUMENT
`A. Limiting the Petition in IPR2017-00782 is Appropriate
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`The Board should limit the petition in IPR2017-00782 for at least the
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`ActiveUS 167748628v.1
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`following reasons.
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`First, both parties have agreed to limit this proceeding by removing claim 12,
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`as stated at oral argument on May 1, 2018.
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`Second, removing claim 12 promotes efficient use of the resources of the
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`Board and saves expense for the parties. The oral argument in the proceeding has
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`already been held and, without claim 12, there would be no need for supplemental
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`briefing and/or a supplemental hearing.
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`B.
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`Summary
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`For the foregoing reasons, both parties respectfully request that the Board
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`remove claim 12 of the ’999 patent from this inter partes review proceeding, and
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`limit the petition in this inter partes review proceeding to claims 10, 11, 13-15, and
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`20 of the ’999 patent.
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`Respectfully submitted,
`/Haixia Lin/
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`Haixia Lin
`Registration No. 61,318
`Counsel for Petitioner
`Respectfully submitted,
`/Henry A. Petri, Jr./
`Henry A. Petri, Jr.
`Registration No. 33,063
`Counsel for Patent Owner
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`ActiveUS 167748628v.1
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`2
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`CERTIFICATE OF SERVICE
`I hereby certify that on May 14, 2018, I caused a true and correct copy of the
`foregoing materials:
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`• Joint Motion to Limit Petition Under 37 C.F.R. § 42.71
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`to be served electronically via e-mail to the following:
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`Henry A. Petri, Jr., (Lead Counsel Reg. No. 33,063)
`hpetri@polsinelli.com
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`James P. Murphy (Back-up Counsel Reg. No. 55,474)
`jpmurphy@polsinelli.com
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`Margaux A. Savee (Back-up Counsel Reg. No. 62,940)
`msavee@polsinelli.com
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`Tim R. Seeley (Back-up Counsel Reg. No. 53,575)
`tims@intven.com
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`Russ Rigby (Back-up Counsel Reg. No. 50,267)
`rrigby@intven.com
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`Respectfully Submitted,
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`/Haixia Lin/
`Haixia Lin
`Reg. No. 61,318
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`ActiveUS 167748628v.1
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`i
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