`571-272-7822
`
`
` Paper No. 16
`
`Entered: May 16, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENT INC.,
`Petitioner
`
`v.
`
`PLECTRUM LLC,
`Patent Owner
`____________
`
`IPR2017-01430
`Patent 5,978,951
`____________
`
`
`Before KEN B. BARRETT, MIRIAM L. QUINN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2017-01430
`Patent 5,978,951
`
`Unified Patents Inc. (“Petitioner”) filed a Petition requesting inter partes
`
`review of claims 1–6, 8, 11–14, and 21–24 of U.S. Patent No. 5,978,951 (“the ’951
`patent”). Paper 3. There were four (4) obviousness grounds on which institution
`was requested. Id. at 4, 21–71. Plectrum LLC (“Patent Owner”) filed a
`Preliminary Response to the Petition. Paper 7. On November 14, 2017, we issued
`a Decision instituting inter partes review of claims 8 and 11 of the ’951 patent
`under one (1) of the four (4) asserted grounds for unpatentability. Paper 8. A
`Scheduling Order was entered, with an oral hearing date set on August 2, 2018.
`Paper 9.
`
`On April 24, 2018, the U.S. Supreme Court held that a final written decision
`under 35 U.S.C. § 318(a) shall be with respect to the patentability of all of the
`claims challenged in the petition. SAS Inst., Inc. v. Iancu, 138 S.Ct. 1348, 1358
`(2018). As noted above, although Petitioner challenged claims 1–6, 8, 11–14, and
`21–24 of the ’951 patent, we did not institute review on claims 1–6, 12–14, and
`21–24. By May 3, 2018 Order, we modified our Decision on Institution to institute
`on all of the challenged claims and on all of the grounds asserted in the Petition.
`Paper 15. In that Order, we requested that the parties confer on any impact of the
`modification of the Decision on Institution on briefing and scheduling, and, if any,
`request a conference call with the Board. Id. at 1.
`
`Pursuant to a further request, we held a conference call with the parties on
`May 17, 2018, to discuss how the parties sought to proceed in the case in light of
`SAS and the modified Decision on Institution. Petitioner requested additional
`briefing on the newly-instituted claims and grounds to provide a supplemental
`reply, and proposed that Patent Owner be provided the opportunity to provide a
`response to the additional briefing, with Petitioner then providing a surreply.
`Petitioner stated that it sought approximately ten (10) pages of additional briefing,
`
`
`
`IPR2017-01430
`Patent 5,978,951
`
`and scheduling allowing four (4) weeks for the additional briefing filing, one (1)
`week for Patent Owner response, and one week (1) week for Petitioner surreply.
`Patent Owner did not want to file additional briefing, and opposed any additional
`briefing by Petitioner. Neither party indicated that a schedule extension was
`necessary.
`
`We have considered the parties’ positions on additional briefing and
`authorize Petitioner to file a supplemental brief addressing the claims and grounds
`on which the Board had previously denied institution. The supplemental brief is
`limited to the existing record in the proceeding, and shall address only the
`arguments and evidence in the Petition and the portions of the Decision to Institute
`related to the newly-instituted claims and grounds. Petitioner may not raise new
`arguments or submit new evidence. Petitioner’s supplemental brief shall be no
`more than ten (10) pages to be filed within three (3) weeks of the date of this order.
`Patent Owner, at this time, is not authorized to file a response.
`
`
`
`ORDER
`
`Accordingly, it is hereby:
`
`ORDERED that Petitioner may file a supplemental brief addressing the
`
`newly-instituted claims and ground, limited to ten (10) pages, within three (3)
`weeks of the date of this order.
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2017-01430
`Patent 5,978,951
`
`
`
`PETITIONER:
`David L. Cavanaugh
`Daniel V. Williams
`WILMER CUTLER PICKERING HALE AND DORR LLP
`david.Cavanaugh@wilmerhale.com
`daniel.williams@wilmerhale.com
`
`Roshan Mansinghani
`Jonathan Stroud
`Unified Patents Inc.
`Roshan@unifiedpatents.com
`jonathan@unifiedpatents.com
`
`
`PATENT OWNER:
`Zachariah S. Harrington
`Larry D. Thompson, Jr.
`Matthew J. Antonelli
`ANTONELLI, HARRINGTON & THOMPSON LLP
`zac@ahtlawfirm.com
`larry@ahtlawfirm.com
`matt@ahtlawfirm.com
`
`
`
`
`4
`
`
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