`571-272-7822
`
`
`
`
`
`Paper: 32
`Entered: May 11, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NEXEON LTD.,
`Petitioner,
`
`v.
`
`ONED MATERIAL, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00543 (Patent 7,939,218 B2)
`Case IPR2017-00851 (Patent 8,440,369 B2)1
`____________
`
`
`
`Before JO-ANNE M. KOKOSKI, JON B. TORNQUIST, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order addresses issues that are the same in both proceedings. We
`exercise our discretion to issue one Order to be filed in each case. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`IPR2017-00543 (Patent 7,939,218 B2)
`IPR2017-00851 (Patent 8,440,369 B2)
`
`
`
`On May 9, 2018, a telephone conference was held among respective
`counsel for Nexeon Ltd. (“Petitioner”) and OneD Material, LLC (“Patent
`Owner”), and Judges Kokoski, Tornquist, and Abraham. The purpose of the
`call was to discuss proposed additional briefing and schedule changes in
`light of the orders modifying the institution decision in each proceeding to
`include review of all challenged claims and all challenged grounds.
`IPR2017-00543, Paper 26; IPR2017-00851, Paper 28.
`Patent Owner argued that, due to the number of grounds added to each
`proceeding, it would need three months to conduct additional discovery and
`prepare a Patent Owner Response in each case. As a result, the schedule
`jointly proposed by the parties extends beyond our 12-month statutory
`deadlines for issuing final written decisions in these proceedings. Petitioner
`explained that the parties believe that the Supreme Court’s decision in SAS
`Inst., Inc. v. Iancu, 2018 WL 1914661 (U.S. Apr. 24, 2018), would
`constitute good cause for extending the 12-month deadline. See 37 C.F.R.
`§ 42.100(c) (“An inter partes review proceeding shall be administered such
`that pendency before the Board after institution is normally no more than
`one year. The time can be extended by up to six months for good cause by
`the Chief Administrative Patent Judge. . .”).
`We advised the parties that extensions of the 12-month statutory
`deadline are given only for good cause, and, if an extension is necessary, the
`preference is to keep the extension as short as possible. We further advised
`the parties that additional briefing should be limited to addressing only the
`newly-instituted grounds and claims, for instance, in a supplemental Patent
`
`2
`
`
`
`IPR2017-00543 (Patent 7,939,218 B2)
`IPR2017-00851 (Patent 8,440,369 B2)
`
`
`Owner Response and a supplemental Petitioner Reply thereto.2 Accordingly,
`we directed the parties to file a joint brief in each proceeding explaining why
`the parties need to extend the schedule beyond the 12-month statutory
`deadline. Each joint brief shall be limited to seven (7) pages, with the
`proposed schedule filed separately as an exhibit, and shall be filed no later
`than May 21, 2018.
`In light of the circumstances, we confirmed with the parties that the
`hearings currently scheduled for May 31, 2018 will be postponed, and will
`be rescheduled in due course.
`Accordingly, it is
`ORDERED that the parties shall file a joint brief in each proceeding
`in accordance with the guidance set forth in this Order;
`FURTHER ORDERED that each joint brief shall not exceed seven
`pages, and shall be filed no later than May 21, 2018; and
`FURTHER ORDERED that the oral hearings currently scheduled for
`May 31, 2018 are postponed until further notice.
`
`
`
`
`2 If Patent Owner intends to file a motion to amend with respect to any
`newly-instituted claims, such briefing should be included in the proposed
`schedule.
`
`3
`
`
`
`IPR2017-00543 (Patent 7,939,218 B2)
`IPR2017-00851 (Patent 8,440,369 B2)
`
`
`PETITIONER:
`S. Richard Carden
`James V. Suggs
`Scott Dyar
`McDONNELL BOEHNEN
`HULBERT & BERGHOFF LLP
`carden@mbhb.com
`suggs@mbhb.com
`dyar@mbhb.com
`
`
`PATENT OWNER:
`
`Jennifer Hayes
`Ronald Lopez
`NIXON PEABODY LLP
`jenhayes@nixonpeabody.com
`rflopez@nixonpeabody.com
`
`
`
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
