`
`Paper: 54
`Entered: June 22, 2018
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES I, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01643
`Patent 6,775,745 B1
`____________
`
`
`
`Before JEFFREY S. SMITH, GEORGIANNA BRADEN, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`
`
`
`ORDER
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2016-01643
`Patent 6,775,745 B1
`
`
`
`On April 24, 2018, the Supreme Court held that a decision to institute
`
`under 35 U.S.C. § 314 may not institute on fewer than all claims challenged
`
`in the Petition. SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S.
`
`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 ’745 patent is unpatentable, but we instituted
`
`on fewer than all claims challenged in the Petition. Paper 9. On March 26,
`
`2018, we entered a Final Written Decision. Paper 51.
`
`On May 17, 2019, we held a conference call with the parties to
`
`discuss the impact of SAS on this proceeding. During the call, the parties
`
`requested that the Board institute on all claims and all grounds presented in
`
`the Petition. The parties requested that we include a statement that the
`
`parties will not pursue the newly instituted claims and grounds, and that the
`
`parties will not seek any further briefing, discovery, or evidence on the
`
`newly instituted claims and grounds. Ex. 2019, 10:9-11:10; Ex. 3001.
`
`We modify our Decision on Institution to institute on all of the
`
`challenged claims and all of the grounds presented in the Petition. As
`
`agreed by the parties, the newly instituted claims and grounds will not be
`
`pursued by the parties, and the parties will not seek any further briefing,
`
`discovery, or evidence on the newly instituted claims and grounds.
`
`Furthermore, the parties are authorized to file their stipulation to withdraw
`
`the originally non-instituted grounds and claims.
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the Decision on Institution is modified to include
`
`review of all challenged claims and all grounds presented in the Petition; and
`
`2
`
`
`
`IPR2016-01643
`Patent 6,775,745 B1
`
`
`
`FURTHER ORDERED that the parties are authorized to file a joint
`
`stipulation to withdraw the originally non-instituted grounds and non-
`
`instituted claims from the proceeding.
`
`
`
`PETITIONERS:
`
`Roshan Mansinghani
`
`roshan@unifiedpatents.com
`
`Jonathan Stroud
`jonathan@unifiedpatents.com
`
`James Stein
`james.stein@finnegan.com
`
`Lionel Lavenue
`lionel.lavenue@finnegan.com
`
`
`
`PATENT OWNER:
`
`John R. King
`2jrk@knobbe.com
`
`Ted M. Cannon
`2tmc@knobbe.com
`
`Tim Seeley
`tims@intven.com
`
`James Hietala
`jhietala@intven.com
`
`
`
`Brenton Babcock
`2brb@knobbe.com
`
`3
`
`
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