`571-272-7822
`
`
`
`
`Paper No. 28
`Entered: June 6, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GOOGLE LLC, MICROSOFT CORPORATION, and
`MICROSOFT MOBILE INC.,
`Petitioner,
`
`v.
`
`KONINKLIJKE PHILIPS N.V.,
`Patent Owner.
`____________
`
`Case IPR2017-004471
`Patent 7,529,806 B1
`_______________
`
`
`Before KEVIN F. TURNER, ROBERT J. WEINSCHENK, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`WEINSCHENK, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 Microsoft Corporation and Microsoft Mobile Inc. (“Microsoft”) filed a
`petition in IPR2017-01754, and Microsoft has been joined to the instant
`proceeding.
`
`
`
`IPR2017-00447
`Patent 7,529,806 B1
`
`
`I.
`ANALYSIS
`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 ’806 patent is unpatentable. Paper 7, 2, 20–
`21. On May 11, 2018, we modified our Decision on Institution to institute
`on all of the challenged claims and all of the grounds presented in the
`Petition. Paper 25, 2. On May 23, 2018, we clarified in an email to the
`parties that our May 11, 2018 Order modified the Decision on Institution in
`this case to institute on the following grounds: 1) claims 12 and 13 as
`anticipated by SMIL 1.0; 2) claims 12-16 as obvious over SMIL 1.0; and 3)
`claims 12-16 as obvious over SMIL 1.0 and Hua. Ex. 3001, 2.
`In light of our May 11, 2018 Order, the parties agreed to submit
`supplemental briefing. Id. at 3. Specifically, the parties agreed that Patent
`Owner would file a 5-page brief by May 25, 2018, and Petitioner would file
`a 5-page brief by June 1, 2018. Id. Consistent with the parties’ agreement,
`we authorized Patent Owner to file a 5-page brief that addresses the newly-
`instituted claims and grounds by May 25, 2018, and Petitioner to file a 5-
`page brief that responds to issues raised in Patent Owner’s brief by June 1,
`2018. Id. at 2. This Order memorializes those instructions.
`Pursuant to 35 U.S.C. § 316(a)(11), “the final determination in an
`inter partes review [shall] be issued not later than 1 year after the date on
`which the Director notices the institution of a review under this chapter,
`except that the Director . . . may adjust the time periods in this paragraph in
`
`2
`
`
`
`IPR2017-00447
`Patent 7,529,806 B1
`
`the case of joinder under section 315(c).” The Director has delegated the
`authority to adjust the one-year period to the Board. See 37 C.F.R. §
`42.100(c). In particular, 37 C.F.R. § 42.100(c) provides:
`An inter partes review proceeding shall be administered such
`that pendency before the Board after institution is normally no
`more than one year. The time can be . . . adjusted by the Board
`in the case of joinder.
`Google LLC filed the Petition in this proceeding (Paper 2), and we later
`joined Microsoft Corporation and Microsoft Mobile Inc. to this proceeding
`under 35 U.S.C. § 315(c) (Paper 15, 16–17). In accordance with 37 C.F.R.
`§ 42.100(c), we hereby adjust the time period for a final determination in
`this proceeding, which involves joinder, to permit us to consider and
`determine the pending issues. We will issue a final determination by
`September 8, 2018.
`
`II. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that Patent Owner may file a 5-page brief that addresses
`the newly-instituted claims and grounds by May 25, 2018;
`FURTHER ORDERED that Petitioner may file a 5-page brief that
`responds to issues raised in Patent Owner’s brief by June 1, 2018; and
`FURTHER ORDERED that, pursuant to 37 C.F.R. § 42.100(c), we
`hereby adjust the date for a final determination in this proceeding to
`September 8, 2018.
`
`
`
`
`3
`
`
`
`IPR2017-00447
`Patent 7,529,806 B1
`
`PETITIONER:
`
`David Krinsky
`Aaron Maurer
`Christopher Suarez
`Christopher Geyer
`WILLIAMS & CONNOLLY LLP
`dkrinsky@wc.com
`amaurer@wc.com
`csuarez@wc.com
`cgeyer@wc.com
`
`PATENT OWNER:
`
`Justin J. Oliver
`Jason Dorsky
`FITZPATRICK, CELLA, HARPER & SCINTO
`philipsipr@fchs.com
`jdorsky@fchs.com
`
`4
`
`
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