`571-272-7822
`
`
`
`
`Paper: 30
`Entered: April 27, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DEXCOM, INC.,
`Petitioner,
`
`v.
`
`WAVEFORM TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01051
`Patent 7,529,574 B2
`____________
`
`
`
`Before BART A. GERSTENBLITH, JON B. TORNQUIST, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`
`ROESEL, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2017-01051
`Patent 7,529,574 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, No. 16-969, 2018 WL
`1914661, at *10 (U.S. Apr. 24, 2018). The Court stated “it’s the petitioner,
`not the Director, who gets to define the contours of the proceeding.” Id. at
`*5. In addition, the Court stated that the language of 35 U.S.C. § 314(b)
`indicates a “binary choice” whether to institute an inter partes review. Id.
`In this case, we instituted an inter partes review of all challenged
`claims, but based on only one of the grounds of unpatentability presented in
`the Petition. Paper 7 (institution decision), 2, 4, 32. In view of SAS, we
`modify our institution decision to institute review based on all 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 grounds presented in the Petition;
`and
`
`2
`
`
`
`IPR2017-01051
`Patent 7,529,574 B2
`
`
`FURTHER ORDERED that Petitioner and Patent Owner shall confer
`to determine whether they desire any changes to the schedule or desire
`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.
`
`
`
`3
`
`
`
`IPR2017-01051
`Patent 7,529,574 B2
`
`PETITIONER:
`
`Matthew Johnson
`David Cochran
`Calvin P. Griffith
`JONES DAY
`mwjohnson@jonesday.com
`dcochran@jonesday.com
`cpgriffith@jonesday.com
`
`
`PATENT OWNER:
`
`Scott Eads
`Karri Bradley
`Nicholas Aldrich
`Jason Wrubleski
`SCHWABE, WILLIAMSON & WYATT, P.C.
`seads@schwabe.com
`kbradley@schwabe.com
`
`
`
`4
`
`