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` Paper 33
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` Entered: May 4, 2018
`
`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NVIDIA CORPORATION,
`Petitioner,
`v.
`POLARIS INNOVATIONS LIMITED,
`Patent Owner.
`____________
`
`Case IPR2017-00381
`Patent 7,886,122 B2
`____________
`
`
`
`Before SALLY C. MEDLEY, BARBARA A. PARVIS, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`PARVIS, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2017-00381
`Patent 7,886,122 B2
`
`
`Background
`Petitioner filed a Petition requesting an inter partes review of
`claims 1−28 (“the challenged claims”) of U.S. Patent No. 7,886,122 B2
`(Ex. 1001, “the ’122 patent”). Paper 2 (“Pet.”). Patent Owner filed a
`Preliminary Response. Paper 7.
`In its Petition, Petitioner asserts the following grounds of
`unpatentability (Pet. 1–2):
`Challenged Claim(s)
`Reference(s)
`Basis
`1, 5, 6, 8, 9, 13, 14, 16, 20, and 24
`Lee1
`§ 102(b)
`2–4, 10–12, 17–19, 21–23, and 25–28
`Lee
`§ 103(a)
`2–4, 10–12, 17–19, 21–23, and 25–28
`Lee and Yoo2
`§ 103(a)
`2, 3, 10, 11, 17, 18, 21, 22, 25, 26, and 28
`Lee and Kyung3 § 103(a)
`7 and 15
`Lee and Gould4 § 103(a)
`On June 22, 2017, we entered an Institution Decision, instituting an
`inter partes review as to all of the challenged claims, but only for the first,
`third, fourth, and fifth grounds, and not the second ground asserted by
`Petitioner. Paper 9, 26–27. After institution of trial, Patent Owner filed a
`Patent Owner Response (Paper 18), to which Petitioner filed a Reply (Paper
`21). Additionally, a hearing was held on March 8, 2018 and a transcript of
`the hearing has been entered into the record as Paper 32.
`
`
`1 U.S. Patent No. 6,496,445 B2, issued Dec. 17, 2002 (Ex. 1004) (“Lee”).
`2 U.S. Patent No. 6,477,110 B2, issued Nov. 5, 2002 (Ex. 1006) (“Yoo”).
`3 U.S. Patent Application Publication No. 2005/0047246 A1, published Mar.
`3, 2005 (Ex. 1005) (“Kyung”).
`4 U.S. Patent No. 7,571,297 B2, issued Aug. 4, 2009, filed Dec. 30, 2005
`(Ex. 1007) (“Gould”).
`
`2
`
`
`
`IPR2017-00381
`Patent 7,886,122 B2
`
`
`On April 24, 2018, the Supreme Court of the United States 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 Institute Inc. v. Iancu, 2018 WL
`1914661, at *10 (U.S. Apr. 24, 2018). The Office issued guidance on the
`implications of SAS on trial proceedings on April 26, 2018 and the Chief
`Judge held a Webinar on April 30, 2018. See “Guidance on the Impact of
`SAS on AIA Trial Proceedings” (April 26, 2018)
`(https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
`board/trials/guidance-impact-sas-aia-trial) (herein “Guidance on SAS”).
`May 2, 2018 Conference Call
`On May 2, 2018, a conference call was held with Judges Medley,
`Parvis, and Ullagaddi and counsel for the parties in attendance. The call was
`held to give the parties an opportunity to discuss the impact of SAS with
`respect to the instant proceeding. During the call, the parties indicated that
`they had conferred, and arrived at an agreement such that we need not
`address the second ground in the Final Written Decision. The parties
`indicated that they had not prepared a joint submission in writing for filing,
`but would be willing to further confer to prepare a joint submission to waive
`or withdraw the second ground.
`
`Discussion
`In light of the parties’ indication that they have arrived at an
`agreement to waive or withdraw the second ground, the parties are given
`until Tuesday May 8, 2018 to further confer and prepare a joint written
`request. As we explained during the call, any such joint request by the
`
`3
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`IPR2017-00381
`Patent 7,886,122 B2
`
`parties must be set forth in writing. The parties are authorized to file their
`joint written request no later than Tuesday May 8, 2018.
`If, after further conferring, the parties decide not to file a joint written
`request, the parties shall further confer to discuss the impact of SAS on the
`instant proceeding, including, for example, whether the parties wish to
`submit further briefing or otherwise change the schedule. The parties must
`request a conference call with the panel to seek authorization for any
`briefing or other changes. The parties are cautioned that as the Oral Hearing
`has been held, an Order instituting on all challenges in this proceeding may
`be entered any time after Tuesday May 8, 2018, and the Final Written
`Decision in this proceeding will be entered thereafter.
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Petitioner and Patent Owner are authorized to file no
`later than Tuesday May 8, 2018 a joint written request that waives or
`withdraws the second ground—namely, the following ground: claims 2–4,
`10–12, 17–19, 21–23, and 25–28 are unpatentable under § 103(a) as obvious
`over Lee; and
`FURTHER ORDERED if the parties elect not to submit the
`aforementioned joint written request that Petitioner and Patent Owner shall
`confer to determine whether they desire further briefing or changes to the
`schedule, and, if so, shall request a conference call with the panel to seek
`authorization for such briefing or schedule changes.
`
`
`
`
`4
`
`
`
`IPR2017-00381
`Patent 7,886,122 B2
`
`PETITIONER:
`
`Jeremy Monaldo
`W. Karl Renner
`Katherine Lutton
`David Hoffman
`Andrew Goldberg
`Katherine Lutton
`FISH & RICHARDSON, PC
`jjm@fr.com axf-ptab@fr.com
`lutton@fr.com
`hoffman@fr.com
`goldberg@fr.com
`lutton@fr.com
`
`
`PATENT OWNER:
`
`Matthew Phillips
`Kevin Laurence
`Derek Meeker
`LAURENCE & PHILLIPS IP LAW LLP
`mphillips@lpiplaw.com
`kevin.laurence@renaissanceiplaw.com
`derek.meeker@meekerip.com
`
`Bryan Richardson
`WILAN INC
`brichardson@wilan.com
`
`
`5
`
`
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