`571-272-7822
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`Paper 32
`Entered: May 10, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FEDEX CORPORATION,
`Petitioner,
`
`v.
`
`INTELLECTUAL VENTURES II LLC
`Patent Owner.
`____________
`
`Case IPR2017-00787
`Patent 7,199,715 B2
`____________
`
`
`
`
`Before DAVID C. MCKONE, BARBARA A. PARVIS, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`MCKONE, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2017-00787
`Patent 7,199,715 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 Decision on Institution, we determined that Petitioner
`demonstrated a reasonable likelihood that it would establish that at least one
`of the challenged claims of U.S. Patent No. 7,199,715 B2 is unpatentable.
`IPR2017-00787, Paper 7. We modify our Decision on Institution to institute
`on all of the challenged claims and all of the grounds presented in the
`IPR2017-00787 Petition (Paper 2). 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.
`On May 7, 2018, a conference call was held between respective
`counsel for the parties and Judges Jefferson, McKone, Parvis, and Hudalla
`for the instant proceeding and two related proceedings, i.e., IPR2017-00729
`and IPR2017-00859.1 A court reporter transcribed the teleconference, and a
`transcript of the teleconference will be filed as an exhibit in this proceeding
`in due course. During the call, we discussed whether the parties would
`request additional briefing and/or schedule adjustments based on SAS. Both
`parties affirmatively waived additional briefing and schedule adjustments.
`As to the claims and grounds previously denied, the parties agreed that no
`further briefing is necessary and that we should base our final written
`
`
`1 As explained during the call, the call was not with an expanded panel of
`the Board. Judges McKone, Parvis, and Hudalla are paneled on IPR2017-
`00729 and IPR2017-00787. Judges Jefferson, McKone, and
`Hudalla are paneled on IPR2017-00859.
`
`2
`
`
`
`IPR2017-00787
`Patent 7,199,715 B2
`
`decision on the evidence and arguments presented in the Petition and the
`Preliminary Response. We agree to the parties’ approach as to the claims
`and grounds previously denied.2
`Accordingly, it is hereby:
`ORDERED that our Decision on Institution is modified to include
`review of all challenged claims and all grounds presented in the
`IPR2017-00787 Petition (Paper 2).
`
`
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`2 Our Scheduling Order of July 25, 2017, cautioned that “any arguments for
`patentability not raised in the [Patent Owner] response will be deemed
`waived.” Paper 8, 3. Because we now agree to consider certain of Patent
`Owner’s arguments from the Preliminary Response when rendering our final
`written decision, we abrogate the caution from the Scheduling Order as to
`the claims and grounds previously denied.
`
`3
`
`
`
`IPR2017-00787
`Patent 7,199,715 B2
`
`PETITIONER:
`Jeffrey A. Berkowitz
`Michael V. Young, Sr.
`Daniel Tucker
`Gracie Mills
`Alexander Boyer
`Bradford Schulz
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`Jeffrey.berkowitz@finnegan.com
`Michael.young@finnegan.com
`Daniel.tucker@finnegan.com
`Gracie.mills@finnegan.com
`Alexander.boyer@finnegan.com
`Bradford.schulz@finnegan.com
`
`PATENT OWNER:
`Andrew G. Heinz
`Alan S. Kellman
`Kevin K.McNish
`Lauren M. Nowierski
`Adam D. Steinmetz
`DESMARAIS LLP
`aheinz@desmaraisllp.com
`akellman@desmaraisllp.com
`kkm-ptab@desmaraisllp.com
`lnowierski@desmaraisllp.com
`asteinmetz@desmaraisllp.com
`
`Tim R. Seeley
`James R. Hietala
`INTELLECTUAL VENTURES
`tim@intven.com
`jhietala@intven.com
`
`
`
`
`4
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`