`Tel: 571-272-7822
`
`
`
`
`
`Paper No. 49
`Entered: July 19, 2019
`
`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 BENJAMIN D. M. WOOD, 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
`
`
`In this inter partes review, Patent Owner filed a contingent motion to
`amend, proposing claims 20–29 as substitutes for claims 9–19 of U.S. Patent
`No. 7,529,574 B2. Paper 18. In our Final Written Decision, we granted
`Patent Owner’s motion to amend as to proposed claims 21, 24, and 25 and
`denied the motion as to proposed claims 20, 22, 23, and 26–29. Paper 48,
`73. The time for filing an appeal from the Final Written Decision has
`expired with no appeal having been filed.
`Following issuance of a final written decision in an inter partes
`review, the Director is required to issue a certificate that, among other
`things, “incorporat[es] in the patent by operation of the certificate any new
`or amended claim determined to be patentable.” 35 U.S.C. § 318(b).
`Although proposed claims 21, 24, and 25 have been determined to be
`patentable, each of them depends from proposed claim 20, which has been
`determined to be unpatentable. Paper 48, 66–67. To facilitate preparation of
`an inter partes review certificate, proposed claims 21, 24, and 25 must be
`rewritten in independent form.
`In consideration of the foregoing, it is hereby:
`ORDERED that, after conferring with Petitioner and no later than
`August 6, 2019, Patent Owner is authorized to file a paper that presents
`claims 21, 24, and 25 in independent form for publication in the inter partes
`review certificate. Each of these claims shall be written to include all
`limitations from proposed substitute independent claim 20. See Paper 18, 4–
`5 (Patent Owner’s motion to amend, including proposed substitute claims
`20, 21, 24, and 25). Each of these claims shall be presented in the format
`provided in the Office Patent Trial Practice Guide, including a parenthetical
`after the claim number identifying which claim the substitute claim replaces.
`
`2
`
`
`
`IPR2017-01051
`Patent 7,529,574 B2
`
`See 77 Fed. Reg. 48,756, 48,766–67 (Aug. 14, 2012). Patent Owner shall
`state whether or not Petitioner agrees with Patent Owner’s presentation of
`rewritten claims;
`FURTHER ORDERED that, after conferring with Patent Owner and
`no later than August 13, 2019, Petitioner is authorized to file any comments
`or objections in response to Patent Owner’s presentation of rewritten claims.
`
`
`
`3
`
`
`
`IPR2017-01051
`Patent 7,529,574 B2
`
`FOR PETITIONER:
`
`Matthew W. Johnson
`David B. Cochran
`Calvin P. Griffith
`JONES DAY
`mwjohnson@jonesday.com
`dcochran@jonesday.com
`cpgriffith@jonesday.com
`
`FOR PATENT OWNER:
`
`Steven J. Prewitt
`Scott D. Eads
`Karri Kuenzli Bradley
`Nicholas F. Aldrich, Jr.
`Jason A. Wrubleski
`SCHWABE, WILLIAMSON & WYATT, P.C.
`SPrewitt@schwabe.com
`seads@schwabe.com
`kbradley@schwabe.com
`naldrich@schwabe.com
`jwrubleski@schwabe.com
`
`
`4
`
`
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