`571-272-7822
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`Paper: 45
`Entered: May 14, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SMITH & NEPHEW, INC.,
`Petitioner,
`
`v.
`
`CONFORMIS, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00511
`Patent No. 7,981,158 B2
`
`
`
`Before PATRICK R. SCANLON, JAMES A. WORTH, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`WIEKER, Administrative Patent Judge.
`
`ORDER
`Granting Joint Motion to Limit the Petition
`37 C.F.R. § 42.20
`
`
`
`
`
`
`
`IPR2017-00511
`Patent No. 7,981,158 B2
`
`
`In this proceeding, we instituted an inter partes review as to claims
`66–72 and 81, under 35 U.S.C. § 103(a), as unpatentable over CAOS,
`Woolson, and Alexander. Paper 9 (“Dec. on Inst.”), 27. We did not institute
`an inter partes review as to claims 73–80, under 35 U.S.C. § 103(a), as
`unpatentable over CAOS, Woolson, Alexander, and Radermacher.
`However, subsequent to the decision of the U.S. Supreme Court in SAS
`Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), we modified our Decision on
`Institution to include the ground challenging claims 73–80. Paper 42
`(modifying the Decision on Institution to include all claims and all grounds
`presented in the Petition).
`On May 11, 2018, with our prior authorization, the parties filed a Joint
`Motion to Limit the Petition. Paper 44; see also Paper 43, 6. Specifically,
`the parties “jointly request that the Board remove claims 73–80 and
`Ground 2 from the Petition.” Paper 44, 1 (citing Pet. 56–77). Removing
`grounds from dispute, pursuant to a joint request of the parties, serves our
`overarching goal of resolving this proceeding in a just, speedy, and
`inexpensive manner. 37 C.F.R. § 42.1(b); see, e.g., Apotex Inc., v. OSI
`Pharms., Inc., Case IPR2016-01284 (PTAB Apr. 3, 2017) (Paper 19)
`(granting, after institution, a joint motion to limit the petition by removing a
`patent claim that was included for trial in the institution decision); SAS, 138
`S. Ct. at 1357.
`Accordingly, we grant the Joint Motion to Limit the Petition. As
`such, the challenge to claims 73–80 is removed from dispute in this
`proceeding. The sole ground of unpatentability remaining in dispute is the
`challenge to claims 66–72 and 81, based on obviousness under 35 U.S.C.
`§ 103(a), over CAOS, Woolson, and Alexander. The supplemental briefing
`
`2
`
`
`
`IPR2017-00511
`Patent No. 7,981,158 B2
`
`schedule ordered for claims 73–80 is moot. Paper 43, 6.
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motion to Limit the Petition is granted;
`FURTHER ORDERED that the Petition is limited to the ground of
`unpatentability asserted against claims 66–72 and 81, based on obviousness
`under 35 U.S.C. § 103, over CAOS, Woolson, and Alexander.
`
`
`
`PETITIONER:
`Christy 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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`