`Tel: 571-272-7822
`
`
`Paper 34
`Entered: August 14, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`ERICSSON INC. and
`TELEFONAKTIEBOLAGET LM ERICSSON,
`Petitioner,
`v.
`INTELLECTUAL VENTURES I LLC,
`Patent Owner.
`_______________
`
`Case IPR2014-00963
`Patent 6,952,408 B2
`_______________
`
`
`Before JOSIAH C. COCKS, WILLIAM A. CAPP, and
`DAVID C. MCKONE, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`IPR2014-00963
`Patent 6,952,408 B2
`
`We issued a Final Written Decision in this proceeding on October 22,
`2015, ruling that Petitioner had not shown, by a preponderance of the
`evidence, that claims 1–12 are anticipated by the ’480 patent (Ex. 1006) or
`obvious over the ’480 patent and GSM 05.02 (Ex. 1012). Paper 29. We
`maintained that ruling upon request for rehearing. Paper 31. On May 29,
`2018, the Federal Circuit reversed our decision as to claim 1 and remanded
`the case to us to determine the patentability of claims 2–12. See Ericsson
`Inc. v. Intellectual Ventures I LLC, 890 F.3d 1336, 1349 (Fed. Cir. 2018)
`(“We have considered all of the arguments presented by both sides, and
`conclude that claim 1 is not patentable. We reverse the decision as to
`claim 1. We vacate the decision as to claims 2–16, and remand for
`determination of patentability of claims 2–16.”).
`The parties met and conferred to determine a recommended procedure
`post-remand. We convened a teleconference on August 1, 2018, with
`Judges McKone, Cocks, and Capp and representatives for Petitioner and
`Patent Owner. Both parties agreed that no further briefing or evidence is
`necessary and that we should decide the patentability of claims 2–12 on the
`papers and evidence already of record. We accept the parties’ agreement
`and will decide the patentability of claims 2–12, in due course, based on the
`papers and evidence already of record.
`We also noted that the Petition raised additional claims and grounds
`on which we did not institute. See Paper 6 (Petition); Paper 10 (Institution
`Decision). During the teleconference, we asked the parties whether the
`Supreme Court’s decision in SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018),
`affects this proceeding. Both parties represented that they currently do not
`seek, and will not seek in the future, to have us address the claims and
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`IPR2014-00963
`Patent 6,952,408 B2
`
`grounds on which we did not institute. Cf. Jazz Pharm., Inc. v. Amneal
`Pharm., LLC, No. 2017-1671, 2018 WL 3400764, at *5 (Fed. Cir. July 13,
`2018) (“[A]ny error committed by the Board under the Administrative
`Procedure Act in partially instituting IPR was waivable.”) (citing PGS
`Geophysical AS v. Iancu, 891 F.3d 1354, 1362–63 (Fed. Cir. 2018)).
`Accordingly, the remand proceeding will not address any claims or grounds
`not addressed in the Final Written Decision.
`
`
`I. ORDER
`No further briefing or evidence is authorized.
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`IPR2014-00963
`Patent 6,952,408 B2
`
`PETITIONER:
`
`Steven G. Spears
`BAKER HOSTETLER LLP
`sspears@bakerlaw.com
`
`G. Matthew McCloskey
`CESARI & MCKENNA LLP
`GMM@c-m.com
`
`PATENT OWNER:
`Michael D. Specht
`Lori A. Gordon
`Byron Pickard
`Ross Hicks
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`mspecht-PTAB@skgf.com
`lgordon-PTAB@skgf.com
`bpickard-PTAB@skgf.com
`rhicks-PTAB@skgf.com
`
`James Hietala
`Tim Seeley
`INTELLECTUAL VENTURES
`jhietala@intven.com
`tim@intven.com
`
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