`
`Paper: 37
`Entered: May 10, 2018
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETAPP, INC.,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00276
`Patent 6,633,945 B1
`____________
`
`
`
`Before JEFFREY S. SMITH, JENNIFER S. BISK, and BEVERLY M.
`BUNTING, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2017-00276
`Patent 6,633,945 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 ’945 patent is unpatentable. Paper 14. We
`modify our institution decision to institute on all of the challenged claims
`and all of the grounds presented in the Petition, including the ground based
`on Ekanadham alone.
` Our Final Written Decision will address all grounds presented in the
`Petition, including the ground based on Ekanadham alone. After the Final
`Written Decision, if either Patent Owner or Petitioner believes that the
`ground based on Ekanadham alone requires additional consideration in this
`proceeding, the parties may file a rehearing request pursuant to 37 C.F.R.
`§ 42.71(d). As an alternative, the Board authorizes the parties to file, within
`one week of the date of this Order, a Joint Motion to Limit the Petition by
`removing the claims and grounds upon which we did not institute in our
`Decision on Institution.
`In consideration of the foregoing, it is hereby:
`ORDERED that our institution decision is modified to include review
`of all challenged claims and all grounds presented in the Petition; and
`FURTHER ORDERED that the parties are authorized to file, within
`one week of the date of this Order, a Joint Motion to Limit the Petition by
`removing the claims and grounds upon which we did not institute upon in
`our Decision on Institution (see Paper 14, 6, 24).
`
`
`
`2
`
`
`
`IPR2017-00276
`Patent 6,633,945 B1
`
`
`PETITIONERS:
`Benjamin Weed
`Erik Halverson
`benjamin.weed.ptab@klgates.com
`erik.halverson@klgates.com
`
`PATENT OWNER:
`Byron Pickard
`Daniel Block
`Lestin Kenton
`Steven Peters
`Tim Seeley
`James Hietala
`bpickard-ptab@sternekessler.com
`dblock-ptab@sternekessler.com
`lkenton-ptab@sternekessler.com
`speters-ptab@sternekessler.com
`tims@intven.com
`jhietala@intven.com
`
`
`3
`
`