`
`Paper: 31
`Entered: May 2, 2018
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NIKE INC.,
`Petitioner,
`
`
`v.
`
`
`JEZIGN LICENSING, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00246
`Patent 6,837,590 B2
`____________
`
`Before KRISTEN L. DROESCH, PHILLIP J. KAUFFMAN, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2017-00246
`Patent 6,837,590 B2
`
`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). Additional guidance on the impact of SAS on PTAB proceedings
`can be accessed at the following web address:
`https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
`board/trials/guidance-impact-sas-aia-trial.
`In our Decision on Institution, we determined that Petitioner
`demonstrated a reasonable likelihood that it would prevail in showing that at
`least one of the challenged claims of U.S. Patent 6,837,590 is unpatentable.
`Paper 12, 32–33. We modify our Decision on Institution to include all of the
`challenged claims and all of the grounds presented in the Petition.
`Petitioner and Patent Owner shall meet and confer to discuss any need
`for additional briefing. The parties shall request a conference call with the
`panel to discuss any requested additional briefing within one (1) week of
`entry of this Order. When requesting a conference call with the panel, the
`parties shall provide several proposed times when both parties are available
`for the conference call.
`In consideration of the foregoing, it is hereby:
`ORDERED that our Decision on Institution is modified to include
`review of all challenged claims and all grounds presented in the Petition; and
`FURTHER ORDERED that, Petitioner and Patent Owner shall meet
`and confer to discuss any need for additional briefing, and if so, request a
`conference call with the panel to seek authorization for such briefing within
`one week of the date of this Order.
`
`
`2
`
`
`
`IPR2017-00246
`Patent 6,837,590 B2
`
`PETITIONERS:
`Edward Sikorski
`James Heintz
`DLA Piper LLP
`ed.sikorski@dlapiper.com
`jim.heintz@dlapiper.com
`
`PATENT OWNER:
`Joseph Zito
`Richard Castellano
`DNL ZITO
`jzito@dnlzito.com
`rcastellano@dnlzito.com
`Paul Grandinetti
`mail@levygrandinetti.com
`
`3
`
`