`571-272-7822
`
`
`
`
`
`Paper 44
`Entered: October 12, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE, INC., HTC CORPORATION, HTC AMERICA, INC.,
`MICROSOFT CORPORATION, MICROSOFT MOBILE OY,
`MICROSOFT MOBILE, INC., SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA, INC., and ZTE (USA) INC.,
`Petitioners,
`
`v.
`
`EVOLVED WIRELESS LLC,
`Patent Owner.
`____________
`
`Cases IPR2016-007581
`Patent 8,218,481 B2
`____________
`
`
`
`Before WILLIAM V. SAINDON, CHRISTOPHER L. CRUMBLEY, and
`TERRENCE W. McMILLIN, Administrative Patent Judges.
`
`McMILLIN, Administrative Patent Judge.
`
`
`ORDER
`Notice of Adjustment of One-Year Pendency Due to Joinder
`35 U.S.C. § 316(a)(11); 37 C.F.R. § 42.100(c)
`
`
`1 IPR2016-01342 and IPR2016-01349 have been consolidated with
`IPR2016-00758. IPR2017-00068 and IPR2017-00106 have been joined
`with IPR2016-00758. IPR2016-00981 has been joined with IPR2016-
`01349. IPR2017-00927 has been joined with IPR2016-01342.
`
`
`
`IPR2016-00758
`Patent 8,218,481 B2
`
`
`Trial in IPR2016-00758 was instituted on September 16, 2016. Paper
`12.2 Trial in IPR2016-00981 was instituted on November 3, 2016.
`IPR2016-00981, Paper 10. Trial in IPR2016-01349 was instituted on
`January 12, 2017. IPR2016-01349, Paper 11. Trial in IPR2016-01342 was
`instituted on January 20, 2017. IPR2016-01342, Paper 11. Trials in
`IPR2017-00068 and IPR2017-00106 were instituted and IPR2017-0068 and
`IPR2017-00106 were joined to IPR2016-00758 on February 23, 2017.
`Papers 27, 28.3 IPR2016-00981 and IPR2016-01349 were joined on
`February 23, 2017. IPR2016-00981, Paper 16. Trial was consolidated in
`IPR2016-000758, IPR2016-01342, and IPR2016-01349 on February 23,
`2017. Paper 24. Trial in IPR2017-00927 was instituted and IPR2017-00927
`was joined with IPR2016-01342 on July 20, 2017. Paper 37.
`All seven of the trials discussed above involve challenges to the
`claims in US 8,218,481 B2. The date set for oral hearing on these seven
`trials is October 17, 2017. Paper 36.
`Pursuant to 35 U.S.C. § 316(a)(11):
`[T]he final determination in an inter partes review [shall] be
`issued not later than 1 year after the date on which the Director
`notices the institution of a review under this chapter, except that
`
`
`2 Citations to papers without a preceding case number refer to documents
`entered in IPR2016-00758. These papers may also have been entered in the
`other proceedings to which they pertain.
`3 In these Decisions, the Board noted that joinder would require modification
`of the trial schedule in IPR2016-00758 and “that all the parties to th[ese]
`proceeding[s] and IPR2016-00758 have agreed to a modified schedule
`which we adopt in the Revised Scheduling Order being entered on the same
`day as this Decision.” Paper 27, 5; Paper 28, 4–5. In the Revised
`Scheduling Order, oral argument was scheduled after September 16, 2017
`(one year anniversary of trial institution in IPR2016-00758). Paper 25, 6.
`
`2
`
`
`
`IPR2016-00758
`Patent 8,218,481 B2
`
`
`the Director . . . may adjust the time periods in this paragraph in
`the case of joinder under section 315(c).
`The Director has delegated the authority to adjust the one-year period to the
`Board. See 37 C.F.R. § 42.100(c). In particular, 37 C.F.R. § 42.100(c)
`provides:
`An inter partes review proceeding shall be administered such
`that pendency before the Board after institution is normally no
`more than one year. The time can be . . . adjusted by the Board
`in the case of joinder.
`In accordance with 37 C.F.R. § 42.100(c), the Board adjusts the time of
`pendency before the Board in IPR2016-00758, IPR2016-00981, IPR2016-
`01342, IPR2016-01349, IPR2017-00068, IPR2017-00106, and IPR2017-
`00927, which involve joinder, to permit the Board to consider and determine
`the pending issues. The Board shall issue a Final Written Decision in this
`proceeding no later than March 15, 2018.
`It is
`ORDERED that the time of pendency in this proceeding, which
`involves joinder, is adjusted; and
`FURTHER ORDERED that, pursuant to 37 C.F.R. § 42.100(c), the
`Board exercises is discretion in IPR2016-00758, IPR2016-00981, IPR2016-
`01342, IPR2016-01349, IPR2017-00068, IPR2017-00106, and IPR2017-
`00927 and adjusts the due date of the final written decisions in these cases to
`March 15, 2018.
`
`
`
`
`3
`
`
`
`IPR2016-00758
`Patent 8,218,481 B2
`
`PETITIONERS:
`Charles M. McMahon
`Hersh H. Mehta
`MCDERMOTT WILL & EMERY
`cmcmahon@mwe.com
`hmehta@mwe.com
`
`James M. Glass
`Kevin P.B. Johnson
`Todd M. Briggs
`John T. McKee
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`jimglass@quinnemanuel.com
`kevinjohnson@quinnemanuel.com
`toddbriggs@quinnemanuel.com
`johnmckee@quinnemanuel.com
`
`Stephen S. Korniczky
`Martin Bader
`Ericka J. Schulz
`SHEPPARD, MULLIN, RICHTER & HAMPTON, LLP
`skorniczky@sheppardmullin.com
`mbader@sheppardmullin.com
`eschulz@sheppardmullin.com
`
`Walter Renner
`Roberto Devoto
`David Holt
`FISH & RICHARDSON P.C.
`IPR00035-0010IP1@fr.com / axf-ptab@fr.com
`PTABInbound@fr.com / devoto@fr.com
`holt2@fr.com
`
`
`
`
`
`4
`
`
`
`IPR2016-00758
`Patent 8,218,481 B2
`
`PATENT OWNER:
`Cyrus Morton
`Ryan Schultz
`Miles Finn
`ROBINS KAPLAN LLP
`cmorton@robinskaplan.com
`rschultz@robinskaplan.com
`mfinn@robinskaplan.com
`
`
`
`5
`
`