`571-272-7822
`
`Paper No. 27
`Entered: May 17, 2018
`
`
`
`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
`Granting Joint Motion to Limit the Petition
`37 C.F.R. § 42.20
`
`
`
`
`
`
`
`
`
`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, 138 S. Ct. 1348, 1369–60 (2018).
`At the May 1, 2018, oral argument, both parties requested on the
`record that claim 12 be withdrawn from the proceeding. In light of these
`representations, we authorized the parties to file a Joint Motion to Limit the
`Petition by removing the claim and ground upon which we did not institute
`in our Decision on Institution. Paper 25; see also 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). On May
`14, 2018, pursuant to that authorization, the parties filed a Joint Motion to
`Limit the Petition. Paper 26. Specifically, “both parties respectfully request
`that the Board remove claim 12 of the ’999 patent from this inter partes
`review proceeding, and limit the petition in this inter partes review
`proceeding to claims 10, 11, 13–15, and 20 of the ’999 patent.” Id. at 2.
`Removing grounds from dispute, pursuant to a joint request of the
`parties, serves our overarching goal of resolving this proceeding in a just,
`speedy, and inexpensive manner. See 37 C.F.R. § 42.1(b); Apotex, Case
`IPR2016-01284 (PTAB Apr. 3, 2017) (Paper 19); SAS, 138 S. Ct. at 1357.
`Accordingly, we grant the Joint Motion to Limit the Petition. As such, the
`challenge to claim 12 is removed from dispute in this proceeding. The
`
`2
`
`
`
`IPR2017-00782
`Patent 8,654,999 B2
`
`grounds remaining in dispute are the challenge to claims 10, 13, 14, and 20,
`based on obviousness under 35 U.S.C. § 103, over Fichtl and Mangold, and
`the challenge to claims 11 and 15, based on obviousness under 35 U.S.C.
`§ 103, over Fichtl, Mangold, and Sacha.
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motion to Limit the Petition is granted;
`FURTHER ORDERED that the Petition is limited to the ground of
`unpatentability asserted against claims 10, 13, 14, and 20, based on
`obviousness under 35 U.S.C. § 103, over Fichtl and Mangold, and the
`ground of unpatentability asserted against claims 11 and 15, based on
`obviousness under 35 U.S.C. § 103, over Fichtl, Mangold, and Sacha.
`
`
`3
`
`
`
`IPR2017-00782
`Patent 8,654,999 B2
`
`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
`
`4
`
`
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