`571-272-7822
`
`
`
`
`
`
`Paper: 13
`Entered: May 3, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`UNILOC LUXEMBOURG S.A.,
`Patent Owner.
`____________
`
`Case IPR2017-01993
`Patent 9,414,199 B2
`____________
`
`
`
`Before MIRIAM L. QUINN, KERRY BEGLEY, and
`CHARLES J. BOUDREAU, Administrative Patent Judges.
`
`BEGLEY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2017-01993
`Patent 9,414,199 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, No. 16-969, 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 one of the challenged claims of the ’199 patent is unpatentable.
`Paper 10, 10–43. In particular, we concluded that Petitioner showed a
`reasonable likelihood of establishing that claims 1 and 2 would have been
`obvious over Blegen and Monteverde—specifically, Blegen alone or in view
`of Monteverde’s teaching of an offer period—but Petitioner did not
`demonstrate a reasonable likelihood of establishing obviousness based on
`any other combination of Blegen with Monteverde. Id. at 10–24. In
`addition, we likewise concluded that Petitioner showed a reasonable
`likelihood of establishing that claims 3–5 would have been obvious over
`Blegen, Monteverde, and Schmidt—specifically, Blegen and Schmidt or
`Blegen and Schmidt in view of Monteverde’s teaching of an offer period—
`but Petitioner did not demonstrate a reasonable likelihood of establishing
`obviousness based on any other teaching of Monteverde. Id. at 25–28. We
`further concluded that Petitioner showed a reasonable likelihood of
`establishing that claims 1–5 would have been obvious over Charlebois and
`Gillies. Id. at 28–39. Finally, we determined that Petitioner did not show a
`reasonable likelihood of demonstrating that Charlebois, Gillies, and Froloff
`render obvious claims 1–5. Id. at 39–42. We instituted inter partes review
`of claims 1–5 only on the grounds of unpatentability on which we
`determined that Petitioner demonstrated a reasonable likelihood of
`prevailing. See id. at 43 (§ III).
`
`2
`
`
`
`IPR2017-01993
`Patent 9,414,199 B2
`
`
`In light of SAS, we now modify our Decision on Institution to institute
`on all of the challenged claims and all of the grounds presented in the
`Petition. Specifically, we modify our Decision on Institution to institute the
`grounds challenging claims 1 and 2 as obvious over Blegen and Monteverde
`and claims 3–5 as obvious over Blegen, Monteverde, and Schmidt as fully
`presented in the Petition (i.e., without limiting the combination with
`Monteverde to Monteverde’s teaching of an offer period). In addition, we
`institute review of the asserted ground challenging claims 1–5 as obvious
`over Charlebois, Gillies, and Froloff.
`The parties shall confer to discuss the impact, if any, of this Order on
`the current schedule set in the Scheduling Order (Paper 11). If, after
`conferring, the parties wish to otherwise change the schedule or submit
`further briefing, 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 or briefing.
`In consideration of the foregoing, it is hereby:
`ORDERED that our Decision on Institution is modified to include
`review of all challenged claims and all grounds presented in the Petition:
`Claims 1 and 2 under 35 U.S.C. § 103 over Blegen and Monteverde;
`Claims 3–5 under 35 U.S.C. § 103 over Blegen, Monteverde, and
`Schmidt;
`Claims 1–5 under 35 U.S.C. § 103 over Charlebois and Gillies; and
`Claims 1–5 under 35 U.S.C. § 103 over Charlebois, Gillies, and Froloff;
`and
`
`FURTHER ORDERED that Petitioner and Patent Owner shall confer
`to determine whether they desire any changes to the schedule or any further
`
`3
`
`
`
`IPR2017-01993
`Patent 9,414,199 B2
`
`briefing and if so, shall request a conference call with the panel to seek
`authorization for such changes or briefing within one week of the date of this
`Order.
`
`
`4
`
`
`
`IPR2017-01993
`Patent 9,414,199 B2
`
`For PETITIONER:
`
`Xin-Yi Zhou
`Sina S. Aria
`Laura A. Bayne
`Luann L. Simmons
`O’MELVENY & MYERS LLP
`APPLEUNILOCIPR@OMM.COM
`
`For PATENT OWNER:
`
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`Ryan Loveless
`ETHERIDGE LAW GROUP
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`ryan@etheridgelaw.com
`
`Sean D. Burdick
`UNILOC USA, INC.
`sean.burdick@unilocusa.com
`
`
`5
`
`
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