`Trials@uspto.gov
`571–272–7822
`Entered: May 38, 2018
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`COMCAST CABLE COMMUNICATIONS, LLC,
`Petitioner,
`v.
`ROVI GUIDES, INC.,
`Patent Owner.
`____________
`Cases
`IPR2017-00950 (Patent 8,006,263 B2)
`IPR2017-00951 (Patent 8,006,263 B2)
`IPR2017-00952 (Patent 8,006,263 B2)
`IPR2017-01048 (Patent 8,578,413 B2)
`IPR2017-01049 (Patent 8,578,413 B2)
`IPR2017-01050 (Patent 8,578,413 B2)
`IPR2017-01065 (Patent 8,046,801 B2)
`IPR2017-01066 (Patent 8,046,801 B2)
`IPR2017-01143 (Patent 8,046,801 B2)1
`____________
`Before KEVIN F. TURNER, MICHAEL R. ZECHER, and
`JESSICA C. KAISER, Administrative Patent Judges.
`TURNER, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`1 This Order addresses issues that are identical in six of the nine cases. We,
`therefore, exercise our discretion to issue one Order to be filed in each case.
`The parties, however, are not authorized to use this style heading in any
`subsequent papers.
`
`
`
`IPR2017-00950 et al.
`Patents 8,006,263 B2; 8,578,413 B2; 8,046,801 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) (hereinafter “SAS”). In the above-identified cases, we
`determined that Petitioner demonstrated a reasonable likelihood that it would
`establish that at least one of the challenged claims in each of the patents is
`unpatentable. Of those cases, the following instituted on less than all of the
`grounds proposed by Petitioner:
`IPR2017-00950 (Patent 8,006,263 B2): compare Paper 12, 8, with id. at 37;
`IPR2017-00951 (Patent 8,006,263 B2): compare Paper 12, 9, with id. at 43;
`IPR2017-01048 (Patent 8,578,413 B2): compare Paper 9, 8, with id. at 37;
`IPR2017-01049 (Patent 8,578,413 B2): compare Paper 9, 8, with id. at 40;
`IPR2017-01065 (Patent 8,046,801 B2): compare Paper 8, 8, with id. at 32;
`IPR2017-01066 (Patent 8,046,801 B2): compare Paper 9, 8, with id. at 33.
`With respect to the six cases cited above, we modify our Decision on
`Institution to include all of the challenged claims and all of the grounds
`presented in the Petitions. See Guidance on the Impact of SAS on 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 2, 2018, we held a conference call with the parties, Comcast
`Cable Communications, LLC (“Comcast”) and Rovi Guides, Inc. (“Rovi”),
`to discuss the impact of the holding in SAS on the current schedule, and
`whether the parties wished to change the schedule or submit further briefing.
`On May 7, 2018, we held another conference call with the parties to clarify
`the options available regarding potential schedule changes or the submission
`of further briefing in light of the holding in SAS. In response thereto, in an
`email of May 11, 2018, the parties indicated that they have agreed to waive
`
`2
`
`
`
`IPR2017-00950 et al.
`Patents 8,006,263 B2; 8,578,413 B2; 8,046,801 B2;
`
`briefing on the previously non-instituted grounds, as discussed above. In
`addition, the parties agreed to waive consideration of the previously non-
`instituted grounds at the consolidated oral hearing. See, e.g., IPR2017-
`00950, Paper 36 (consolidating all nine cases into one oral hearing now
`scheduled on June 19, 2018).
`In consideration of the foregoing, it is hereby:
`ORDERED that our Decisions on Institution are modified to include
`review of all challenged claims and all grounds presented in the respective
`Petitions; and
`FURTHER ORDERED that no additional briefing on the previously
`non-instituted grounds will be considered in the above-cited instituted
`proceedings, and that no consideration or discussion of the previously non-
`instituted grounds will be allowed at the consolidated oral hearing.
`
`
`
`3
`
`
`
`IPR2017-00950 et al.
`Patents 8,006,263 B2; 8,578,413 B2; 8,046,801 B2;
`
`For PETITIONER:
`Frederic M. Meeker
`Bradley C. Wright
`Scott M. Kelly
`Azuka C. Dike
`Joshua Davenport
`Camille Sauer
`Bennett A. Ingvoldstad
`BANNER AND WITCOFF, LTD.
`fmeeker@bannerwitcoff.com
`bwright@bannerwitcoff.com
`skelly@bannerwitcoff.com
`adike@bannerwitcoff.com
`jdavenport@bannerwitcoff.com
`csauer@bannerwitcoff.com
`bingvoldstad@bannerwitcoff.com
`
`For PATENT OWNER:
`Mark D. Rowland
`Gabrielle E. Higgins
`Scott A. McKeown
`James Batchelder
`David Chun
`Scott S. Taylor
`Andrew Sutton
`Josef Schenker
`Henry Huang
`ROPES & GRAY LLP
`Mark.Rowland@ropesgray.com
`Gabrielle.Higgins@ropesgray.com
`Scott.McKeown@ropesgray.com
`James.Batchelder@ropesgray.com
`David.Chun@ropesgray.com
`Scott.Taylor@ropesgray.com
`Andrew.Sutton@ropesgray.com
`Josef.Schenker@ropesgray.com
`Henry.Huang@ropes.gray.com
`
`
`4
`
`
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