`571-272-7822
`
`
`
`
`
`Paper 23
`Entered: May 3, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SK HYNIX INC., SK HYNIX AMERICA INC., and
`SK HYNIX MEMORY SOLUTIONS INC.,
`Petitioners,
`
`v.
`
`NETLIST, INC.
`Patent Owner.
`____________
`
`Case IPR2017-00587 (Patent 8,671,243 B2)
`Case IPR2017-00692 (Patent 8,874,831 B2)
`____________
`
`
`
`Before STEPHEN C. SIU, MATTHEW R. CLEMENTS, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2017-00587 (Patent 8,671,243 B2)
`IPR2017-00692 (Patent 8,874,831 B2)
`
`
`On April 24, 2018, the Supreme Court 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 Inst., Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S.
`Apr. 24, 2018). In our Decisions on Institution in these proceedings, we
`determined that Petitioner demonstrated a reasonable likelihood that it would
`prevail in showing that at least one of the challenged claims of U.S. Patent
`No. 8,671,243 is unpatentable in IPR2017-00587 and at least one of the
`challenged claims of U.S. Patent No. 8,874,831 is unpatentable in IPR2017-
`00692. See IPR2017-00587, Paper 7, 38–39; IPR2017-00692, Paper 7, 28.
`We modify each of our institution decisions to include all of the challenged
`claims and all of the grounds presented in the respective Petitions. See
`Guidance on the Impact of SAS on AIA Trial Proceedings (April 26, 2018),
`available at https://www.uspto.gov/patents-application-process/patent-trial-
`and-appeal-board/trials/guidance-impact-sas-aia-trial.
`The parties shall confer to discuss the impact, if any, of this Order. If,
`after conferring, the parties wish to submit further briefing, the parties must,
`within one week of the date of this Order, request a conference call with the
`panel to seek authorization for such briefing.
`In consideration of the foregoing, it is hereby:
`ORDERED that each of our institution decisions is modified to
`include review of all challenged claims and all grounds presented in the
`respective Petition; and
`
`FURTHER ORDERED that Petitioner and Patent Owner shall confer
`to determine whether they desire any further briefing, and, if so, shall
`request a conference call with the panel to seek authorization for such
`briefing within one week of the date of this Order.
`
`2
`
`
`
`IPR2017-00587 (Patent 8,671,243 B2)
`IPR2017-00692 (Patent 8,874,831 B2)
`
`
`
`PETITIONER:
`
`Joseph A. Micallef
`Wonjoo Suh
`Sidley Austin LLP
`jmicallef@sidley.com
`wsuh@sidley.com
`Sidley-SKH-IPR@sidley.com
`
`
`PATENT OWNER:
`
`Thomas J. Wimbiscus
`Christopher C. Winslade
`Gregory C. Schodde
`Scott P. McBride
`Ronald H. Spuhler
`Wayne H. Bradley
`twimbiscus@mcandrews-ip.com
`cwinslade@mcandrews-ip.com
`gschodde@mcandrews-ip.com
`smcbride@mcandrews-ip.com
`rspuhler@mcandrews-ip.com
`wbradley@mcandrews-ip.com
`
`
`
`3
`
`
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