`
`Paper 34
`Entered: May 3, 2018
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`INFOBIONIC, INC.,
`Petitioner,
`
`v.
`
`BRAEMAR MANUFACTURING, LLC,
`Patent Owner.
`____________
`
`IPR2017-00796
`Patent RE43,767 E
`____________
`
`
`
`Before PHILLIP J. KAUFFMAN, KEVIN W. CHERRY, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`WOODS, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2017-00796
`Patent RE43,767 E
`
`
`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 (Paper 11), we determined that
`Petitioner demonstrated a reasonable likelihood that it would establish that
`all of the challenged claims (claims 1–9 and 11–26) of U.S. Patent No.
`RE43,767 E are unpatentable. Paper 11, 2. Although we instituted review
`of all challenged claims under Petitioner’s Grounds 1–3, we did not institute
`review of any claim under Ground 4 or 5, as we determined that Petitioner
`did not show a reasonable likelihood of prevailing under either of those
`grounds. Id. at 27–34. In view of SAS, we modify our institution decision to
`institute on all of the grounds presented in the Petition, including Grounds 4
`and 5.1
`The parties must, within one week of the date of this Order, provide
`dates and times when they would be available for a conference call with the
`panel. Prior to the conference call with the panel, the parties shall confer to
`discuss the impact, if any, of this Order on this proceeding, including
`whether supplemental briefing is needed.
`In consideration of the foregoing, it is hereby:
`ORDERED that our institution decision is modified to include review
`of all challenged claims and all grounds presented in the Petition; and
`FURTHER ORDERED that Petitioner and Patent Owner shall confer
`to determine the impact of this Order on this proceeding and, within one
`
`
`1 See
`https://www.uspto.gov/sites/default/files/documents/guidance_on_the_impac
`t_of_sas_on_aia_trial_proceedings_%20%28april_26%2C_2018%29.pdf
`
`2
`
`
`
`IPR2017-00796
`Patent RE43,767 E
`
`week of this Order provide the parties’ availability for a conference call with
`the panel.
`
`
`3
`
`
`
`IPR2017-00796
`Patent RE43,767 E
`
`PETITIONER:
`Charles Sanders
`charles.sanders@lw.com
`
`Jonathan Strang
`jonathan.strang@lw.com
`
`Kristopher Davis
`kris.davis@lw.com
`
`PATENT OWNER:
`Ching-Lee Fukuda
`clfukuda@sidley
`
`Bradford Badke
`jbadke@sidley.com
`
`Thomas Broughan
`tbroughan@sidley.com
`
`4
`
`