`
`Paper 12
`Entered: May 3, 2018
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01800
`Patent 8,243,723 B2
`____________
`
`
`
`Before JENNIFER S. BISK, MIRIAM L. QUINN, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`QUINN, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2017-01800
`Patent 8,243,723 B2
`
`
`
`On April 24, 2018, the Supreme Court held that a decision to institute
`under 35 U.S.C. § 314 may not institute on less than all claims challenged in
`the petition. SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S.
`Apr. 24, 2018). In our Decision on Institution, we determined that Petitioner
`demonstrated a reasonable likelihood that it would establish that at least 1 of
`the challenged claims of the ’723 patent is unpatentable. Decision on
`Institution, Paper 8, 2425. We modify our institution decision to institute
`on all of the challenged claims on the ground presented in the Petition.
`Under the Scheduling Order entered in this case, Patent Owner’s
`Response to the Petition and any motion to amend the patent are currently
`due on May 7, 2018. Paper 9, 8 (“DUE DATE 1”). In view of the present
`Order, we hereby extend that due date by one month, to June 7, 2018. The
`parties shall confer to discuss the impact, if any, of this Order on other dates
`in the current schedule. In that regard, the parties are reminded that they
`may stipulate to further changes to DUE DATES 1 through 5, subject to the
`limitations set forth in the Scheduling Order, without the need for additional
`authorization from the panel, provided, however, that a notice of any such
`stipulation, specifically identifying the changed due dates, must be promptly
`filed. See id. at 2. If, after conferring, the parties are unable to reach
`agreement or wish to otherwise change the schedule, the parties must, within
`one week of the date of this Order, request a conference call with the panel
`to seek authorization for such changes.
`
`2
`
`
`
`IPR2017-01800
`Patent 8,243,723 B2
`
`
`
`In consideration of the foregoing, it is hereby:
`ORDERED that our institution decision (Paper 8) is modified to
`include review of all challenged claims on the ground presented in the
`Petition;
`FURTHER ORDERED that DUE DATE 1 set forth in the Scheduling
`Order is extended to June 7, 2018; and
`FURTHER ORDERED that Petitioner and Patent Owner shall confer
`to determine whether they desire any changes to the schedule, and, if so,
`shall either file notice of any stipulated changes or request a conference call
`with the panel within one week of the date of this Order to resolve any
`disagreement or to seek authorization for changes not otherwise authorized
`under the Scheduling Order.
`
`
`3
`
`
`
`IPR2017-01800
`Patent 8,243,723 B2
`
`
`PETITIONER:
`Naveen Modi
`Joseph E. Palys
`Phillip W. Citroen
`Michael Wolfe
`PAUL HASTINGS
`naveenmodi@paulhastings.com
`josephpalys@paulhastings.com
`phillipcitroen@paulhastings.com
`michaelwolfe@paulhastings.com
`PH-Samsung-Uniloc-IPR@paulhastings.com
`
`PATENT OWNER:
`
`Brett Mangrum
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`ryan@etheridgelaw.com
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`4
`
`