`571-272-7822
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`Paper 42
`Entered: May 11, 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 IPR2017-00859
`Patent 9,047,586 B2
`____________
`
`
`
`Before TREVOR M. JEFFERSON, DAVID C. MCKONE, and
`JOHN A. HUDALLA, Administrative Patent Judges.
`
`JEFFERSON, Administrative Patent Judge.
`
`
`
`ORDER
`CONDUCT OF THE PROCEEDING
`37 C.F.R. § 42.5
`
`
`
`
`
`
`IPR2017-00859
`Patent 9,047,586 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
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`of the challenged claims of U.S. Patent No 9,047,586 B2 is unpatentable.
`
`IPR2017-00859, Paper 7. We modify our Decision on Institution to institute
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`on all of the challenged claims and all of the grounds presented in the
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`IPR2017-00859 Petition (Paper 2). See Guidance on the Impact of SAS on
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`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
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`for the instant proceeding and two related proceedings, i.e., IPR2017-00729
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`and IPR2017-00787.1 A court reporter transcribed the teleconference, and a
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`transcript of the teleconference will be filed as an exhibit in this proceeding
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`in due course. During the call, we discussed whether the parties would
`
`request additional briefing and/or schedule adjustments based on SAS. Both
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`parties affirmatively waived additional briefing and schedule adjustments.
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`As to the claims and grounds previously denied, the parties agreed that no
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`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
`
`
`
`IPR2017-00859
`Patent 9,047,586 B2
`
`decision on the evidence and arguments presented in the Petition and the
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`Preliminary Response. We agree to the parties’ approach as to the claims
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`and grounds previously denied.2
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`Accordingly, it is hereby:
`
`ORDERED that our Decision on Institution is modified to
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`include review of all challenged claims and all grounds presented in
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`the IPR2017-00859 Petition (Paper 2).
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`2 Our Scheduling Order of August 10, 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
`
`
`
`IPR2017-00859
`Patent 9,047,586 B2
`
`PETITIONER:
`
`Jeffrey A. Berkowitz
`Michael V. Young, Sr.
`Daniel Tucker
`Aliza George
`Alexander Boyer
`Bradford Schulz
`Joseph M. Schaffner (pro hac vice)
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`jeffrey.berkowitz@finnegan.com
`michael.young@finnegan.com
`daniel.tucker@finnegan.com
`aliza.carrano@finnegan.com
`alexander.boye@finnegan.com
`bradford.schulz@finnegan.com
`
`
`
`
`PATENT OWNER:
`
`Allan S. Kellman
`Andrew G. Heinz
`Kevin K. McNish
`Adam D. Steinmetz
`Lauren M. Nowierski (pro hac vice)
`DESMARAIS LLP
`akellman@desmaraisllp.com
`aheinz@desmaraisllp.com
`kkm-ptab@desmaraisllp.com
`asteinmetz@desmaraisllp.com
`
`
`Tim R. Seeley
`James R. Hietala
`INTELLECTUAL VENTURES
`tim@intven.com
`jhietala@intven.com
`
`
`4
`
`
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