`571-272-7822
`
`
`
`
`
`
`Paper 10
`Entered: May 29, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`AVER INFORMATION INC. AND IPEVO, INC.,
`Petitioner,
`
`v.
`
`PATHWAY INNOVATIONS AND TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-02108
`Patent 8,508,751 B1
`____________
`
`
`
`Before JONI Y. CHANG, THOMAS L. GIANNETTI, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`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.
`
`
`
`IPR2017-02108
`Patent 8,508,751 B1
`
`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 ’751 patent is unpatentable. Paper 9, 26.
`
`However, we did not institute review of all claims challenged in the Petition.
`
`Specifically, we did not institute review of claims 8–10, 12–14, 16, 18, and
`
`20. Paper 9, 24, 25. We also did not institute review as to the grounds based
`
`on Krisbergh, Hara, Mitsui, and Ishii. Id.
`
`On May 21, 2018, at the Board’s request, a telephone conference was
`
`held with counsel for the parties to discuss the status of this Proceeding in
`
`light of the SAS decision, including a discussion of whether the parties might
`
`consider a joint motion to limit the Petition to withdraw or waive any
`
`grounds set forth therein. In a May 25, 2018 email to the Board, Patent
`
`Owner advised that, after further discussion between the parties, Patent
`
`Owner prefered to proceed on all of the challenged claims and all grounds
`
`raised in the Petition. Patent Owner proposes a two-month extension for all
`
`remaining deadlines, starting with Patent Owner’s response. Petitioner
`
`proposes a one-month extension for the Patent Owner response, and a
`
`two-week extension for Petitioner’s reply, all other deadlines remaining the
`
`same.
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a), we modify our
`
`Decision on Institution (Paper 9) to include review of all challenged claims
`
`and all grounds presented in the Petition (Paper 3, 20) — namely, the
`
`following grounds:
`
`(1) claims 1−5, 7, 18, and 20 as unpatentable under § 103(a) over
`
`Morichika alone;
`
`2
`
`
`
`IPR2017-02108
`Patent 8,508,751 B1
`
`
`(2) claims 8−10, 12, 14, and 16 as unpatentable under § 103(a) over
`
`the combination of Krisbergh and Hara;
`
`(3) claims 13 and 16 as unpatentable under § 103(a) over the
`
`combination of Krisbergh, Hara, and Mitsui; and
`
`(4) claims 1−5, 8, and 16 as unpatentable under § 103(a) over Ishii
`
`alone;
`
`FURTHER ORDERED that the Scheduling Order (Paper 8) is
`
`modified as follows:
`
`Due Date 1
`
`Due Date 2
`
`Due Date 3
`
`
`
`
`
`
`
`July 23, 2018
`
`October 8, 2018
`
`October 29, 2018
`
`(Remaining dates as scheduled)
`
`
`
`
`
`3
`
`
`
`IPR2017-02108
`Patent 8,508,751 B1
`
`PETITIONER
`
`Jackson Ho
`Jackson.ho@klgates.com
`
`Benjamin Weed
`Benjamin.weed.ptab@klgates.com
`
`Kevin McCormick
`Kevin.mccormick@klgates.com
`K&L Gates LLP
`
`PATENT OWNER
`
`Trevor Coddington
`trevorcoddington@sandiegoiplaw.com
`San Diego IP Law Group LLP
`
`
`
`4
`
`
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