`571-272-7822
`
`
`
`
`
`
`Paper: 42
`Entered: April 27, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SMITH & NEPHEW, INC.,
`Petitioner,
`
`v.
`
`CONFORMIS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00373 (Patent No. 8,551,169 B2)
`Case IPR2017-00511 (Patent No. 7,981,158 B2)
`Case IPR2017-00544 (Patent No. 7,534,263 B2)
`Case IPR2017-00778 (Patent No. 8,062,302 B2)
`Case IPR2017-00779 (Patent No. 8,062,302 B2)
`Case IPR2017-00780 (Patent No. 8,062,302 B2)1
`
`
`
`Before PATRICK R. SCANLON, BEVERLY M. BUNTING,
`JAMES A. WORTH, and AMANDA F. WIEKER,
`Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 We exercise our discretion to issue a common paper in each proceeding
`with a joint caption. The parties are not authorized to do the same.
`
`
`
`IPR2017-00373 (Patent No. 8,551,169 B2)
`IPR2017-00511 (Patent No. 7,981,158 B2)
`IPR2017-00544 (Patent No. 7,534,263 B2)
`IPR2017-00778 (Patent No. 8,062,302 B2)
`IPR2017-00779 (Patent No. 8,062,302 B2)
`IPR2017-00780 (Patent No. 8,062,302 B2)
`
`
`On April 24, 2018, the Supreme Court held that a final written
`decision under 35 U.S.C. § 318(a) must decide the patentability of all claims
`challenged in the petition. SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at
`*10 (U.S. Apr. 24, 2018). In our Decisions on Institution, we determined
`that Petitioner demonstrated a reasonable likelihood that it would establish
`that at least one of the challenged claims of each challenged patent is
`unpatentable. See IPR2017-00511, Paper 9, 27; IPR2017-00373, Paper 8,
`19; IPR2017-00544, Paper 8, 36; IPR2017-00778, Paper 7, 40; IPR2017-
`00779, Paper 7, 40; IPR2017-00780, Paper 7, 40. Pursuant to the holding in
`SAS, we modify our Decisions on Institution to institute on all of the
`challenged claims and all of the grounds presented in the Petition, in each
`captioned proceeding.
`Petitioner and Patent Owner shall meet and confer to discuss the need
`for additional briefing and any adjustments to the schedule. The parties shall
`participate in a conference call with the Board to discuss any requested
`additional briefing and schedule changes on May 1, 2018.
`
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), we modify our
`Decisions on Institution to include all claims and all grounds presented in
`the Petition in each captioned proceeding; and
`FURTHER ORDERED that Petitioner and Patent Owner shall meet
`and confer to discuss additional briefing and schedule changes, and shall
`
`2
`
`
`
`IPR2017-00373 (Patent No. 8,551,169 B2)
`IPR2017-00511 (Patent No. 7,981,158 B2)
`IPR2017-00544 (Patent No. 7,534,263 B2)
`IPR2017-00778 (Patent No. 8,062,302 B2)
`IPR2017-00779 (Patent No. 8,062,302 B2)
`IPR2017-00780 (Patent No. 8,062,302 B2)
`
`participate in a conference call with the Board to discuss these topics on
`May 1, 2018.
`
`PETITIONER:
`Christa Lea
`Joseph Re
`Colin Heideman
`Benjamin Anger
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2cgl@knobbe.com
`2jrr@knobbe.com
`2cbh@knobbe.com
`2bba@knobbe.com
`
`
`PATENT OWNER:
`Sanya Sukduang
`Timothy McAnulty
`Daniel Klodowski
`Kassandra Officer
`FINNEGAN, HENDERSON, FARABOE,
`GARRETT & DUNNER, LLP
`sanya.sukduang@finnegan.com
`timothy.mcanulty@finnegan.com
`daniel.klodowski@finnegan.com
`kassandra.offier@finnegan.com
`
`3
`
`
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