`571-272-7822
`
`
`
`
`
`Paper: 28
`Entered: April 27, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NEXEON LTD.,
`Petitioner,
`
`v.
`
`ONED MATERIAL, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00851
`Patent 8,440,369 B2
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JON B. TORNQUIST, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2017-00851
`Patent 8,440,369 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 Decision on Institution, we determined
`that Petitioner demonstrated a reasonable likelihood that it would establish
`that at least one of the challenged claims of the ’369 patent is unpatentable.
`Paper 7, 36–37. Pursuant to the holding in SAS, we modify our institution
`decision to institute on all of the challenged claims and all of the grounds
`presented in the Petition.
`The parties remain free to stipulate to changes in the schedule under
`the terms of the Scheduling Order. If, after conferring, the parties wish to
`otherwise change the schedule or submit briefing not set forth in the
`Scheduling Order, the parties must, within one week of the date of this
`Order, request a conference call with the panel to seek authorization for such
`changes or briefing.
`In consideration of the foregoing, it is hereby:
`ORDERED that, pursuant to 35 U.S.C. § 314(a), we modify our
`institution decision 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 whether they desire any changes to the schedule or briefing not
`already permitted under the Scheduling Order, and, if so, request a
`conference call with the panel to seek authorization for such changes or
`briefing within one week of the date of this Order.
`
`
`
`2
`
`
`
`IPR2017-00851
`Patent 8,440,369 B2
`
`
`PETITIONER:
`S. Richard Carden
`James V. Suggs
`McDONNELL BOEHNEN
`HULBERT & BERGHOFF LLP
`carden@mbhb.com
`suggs@mbhb.com
`
`
`PATENT OWNER:
`
`Jennifer Hayes
`NIXON PEABODY LLP
`jenhayes@nixonpeabody.com
`
`
`
`
`
`
`3
`
`