`
`Trials@uspto.gov
`Tel: 571-272-7822 Entered: April 27, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`AXON ENTERPRISE, INC.,
`Petitioner,
`
`v.
`
`DIGITAL ALLY, INC.,
`Patent Owner.
`
`_______________
`
`
`IPR2017-00375
`Patent 8,781,292 B1
`
`_______________
`
`
`
`
`
`Before PHILLIP J. KAUFFMAN, MINN CHUNG, and
`ROBERT L. KINDER, Administrative Patent Judges.
`
`KAUFFMAN, Administrative Patent Judge.
`
`
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2017-00375
`Patent 8,781,292 B1
`
`
`The Supreme Court issued its decision on April 25, 2018, in SAS
`
`Institute Inc. v. Iancu, 584 U.S. ____ (2018), addressing the Board’s ability
`
`to issue a final written decision addressing a subset of the claims challenged
`
`in a petition. In our Decision on Institution, we determined that Petitioner
`
`demonstrated a reasonable likelihood that it would prevail in showing that at
`
`least 1 of the challenged claims of the ’292 patent is unpatentable and we
`
`instituted inter partes review of all challenged claims. Paper 9. We
`
`instituted on obviousness over (1) Pierce, and (2) Pierce and 20/20-W. Id. at
`
`27–28. We did not institute on Petitioner’s contention that if Pierce alone
`
`and Pierce combined with 20/20-W do not disclose a second communication
`
`signal, it would have been an obvious variant of Pierce. Id. at 27, fn.. 18. In
`
`light of the Supreme Court’s decision in SAS, we amend our institution
`
`decision to include review of all of the grounds presented in thePetition.
`
`Petitioner and Patent Owner shall meet and confer to discuss the need for
`
`additional briefing and any adjustments to the schedule. We are willing to
`
`consider an extension of the one-year statutory deadline if warranted.
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a), we amend our
`
`institution decision to include review of all grounds presented in the Petition;
`
`and
`
`FURTHER ORDERED that, Petitioner and Patent Owner shall meet
`
`and confer to discuss additional briefing and schedule changes, and shall
`
`provide the Board three mutually agreed upon dates and times for a
`
`conference call that can occur no later than five business days from entry of
`
`this order.
`
`
`
`
`
`
`
`2
`
`
`
`IPR2017-00375
`Patent 8,781,292 B1
`
`PETITIONER:
`
`Michael Specht
`Richard Bemben
`Michelle Holoubek
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`mspecht-ptab@skgf.com
`rbemben-ptab@skgf.com
`holoubek@skgf.com
`
`
`PATENT OWNER:
`
`Jennifer Bailey
`Marshall Honeyman
`ERISE IP, P.A.
`jennifer.bailey@eriseip.com
`marshall.honeyman@eriseip.com
`
`
`
`
`
`
`3
`
`
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