`Trials@uspto.gov
`Entered: May 7, 2018
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`K/S HIMPP,
`Petitioner,
`
`v.
`
`III HOLDINGS 4, LLC
`Patent Owner.
`____________
`
`Case IPR2017-00782
`Patent 8,654,999 B2
`____________
`
`
`Before SALLY C. MEDLEY, DAVID C. MCKONE, and
`KIMBERLY MCGRAW, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-00782
`Patent 8,654,999 B2
`
`
`The Institution Decision in IPR2017-00782 instituted a trial on claims
`10, 11, 13–15, and 20 of U.S. Patent No. 8,654,999 B2 (Ex. 1101, “the ’999
`patent”) but not claim 12. Paper 8, 33. Subsequently, 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).
`We convened a teleconference on April 26, 2018, to discuss the
`impact of the Supreme Court’s decision on the oral argument, scheduled for
`May 1, 2018. The parties and the panel agreed to hold the oral argument as
`scheduled. Nevertheless, we directed the parties to consult with their
`respective clients and meet and confer with each other to discuss the
`treatment of claim 12 going forward.
`We held the oral argument on May 1, 2018, as scheduled. 1 At the oral
`argument, both parties requested on the record that claim 12 be withdrawn
`from the proceeding. In light of these representations, the Board authorizes
`the parties to file, within one week of the date of this Order, a Joint Motion
`to Limit the Petition by removing the claim and ground upon which we did
`not institute in our Decision on Institution. See, e.g., Apotex Inc., v. OSI
`Pharms., Inc., Case IPR2016-01284 (PTAB Apr. 3, 2017) (Paper 19)
`(granting, after institution, a joint motion to limit the petition by removing a
`patent claim that was included for trial in the institution decision).
`
`
`1 The oral hearing jointly considered IPR2017-00782 and IPR2017-00781.
`IPR2017-00781 involves the same parties and challenges the same patent.
`That proceeding, however, challenges different claims of the ’999 patent.
`We instituted a trial on all challenged claims and all petitioned grounds in
`that proceeding.
`
`2
`
`
`
`IPR2017-00782
`Patent 8,654,999 B2
`
`
`In consideration of the foregoing, it is hereby:
`ORDERED that the parties are authorized to file, within one week of
`the date of this Order, a Joint Motion to Limit the Petition by removing
`claim 12.
`
`
`
`PETITIONER:
`Donald Steinberg
`Yung-Hoon Ha
`Haixia Lin
`Christopher O'Brien
`WILMER, CUTLER, PICKERING, HALE and DORR LLP
`don.steinberg@wilmerhale.com
`sam.ha@wilmerhale.com
`haixia.lin@wilmerhale.com
`christopher.obrien@wilmerhale.com
`
`PATENT OWNER:
`
`Henry Petri
`James Murphy
`Margaux Savee
`POLSINELLI PC
`hpetri@polsinelli.com
`jpmurphy@polsinelli.com
`msavee@polsinelli.com
`
`Tim Seeley
`Russell Rigby
`INTELLECTUAL VENTURES
`tims@intven.com
`rrigby@intven.com
`
`
`3
`
`
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