`
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`
`
`
`
`
`
` Paper 23
`
`
`
` Entered: May 17, 2018
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ONE WORLD TECHNOLOGIES, INC.
`d/b/a TECHTRONIC INDUSTRIES POWER EQUIPMENT,
`Petitioner,
`v.
`THE CHAMBERLAIN GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01137
`Patent 6,998,977 B2
`____________
`
`
`
`Before JONI Y. CHANG, JUSTIN T. ARBES, and
`JON M. JURGOVAN, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Joint Motion to Limit Petition
`
`
`
`
`
`
`
`
`
`IPR2017-01137
`Patent 6,998,977 B2
`
`
`On October 16, 2017, we entered an Institution Decision in the instant
`proceeding, instituting an inter partes review as to all of the challenged
`claims, but not all of the grounds presented in the Petition. Paper 7, 28−29.
`In particular, the Institution Decision originally instituted the instant review
`based on the following grounds of unpatentability (the “originally instituted
`grounds”) (id.):
`
`Claim(s)
`
`1−4, 6−11,
`and 22−25
`
`11 and 25
`
`5
`
`3
`
`Basis
`
`Reference(s)
`
`§§ 102(a), 102(e)(1) Menard (Ex. 1003)
`
`§ 103(a)
`
`§ 103(a)
`
`§ 103(a)
`
`Menard and Lee (Ex. 1007)
`
`Menard and Held (Ex. 1005)
`
`Menard and the HomeRF
`Specifications (Exs. 1004 and 1012)
`
`
`On April 24, 2018, the Supreme Court of the United States 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 Institute Inc. v. Iancu, 2018 WL
`1914661, at *10 (U.S. Apr. 24, 2018). In light of the Guidance on the
`Impact of SAS on AIA Trial Proceedings posted on April 26, 2018 (at
`https://www.uspto.gov/patents-application-process/patent-trial-and-appeal-
`board/trials/guidance-impact-sas-aia-trial), we modified our Institution
`Decision to institute on all of the grounds presented in the Petition, namely
`adding one additional ground with respect to claim 3 based on Menard and
`Jacobs. Paper 17.
`
`2
`
`
`
`IPR2017-01137
`Patent 6,998,977 B2
`
`
`Pursuant to our Order (Paper 20, 7), the parties filed a Joint Motion to
`Limit the Petition to remove the newly instituted ground from consideration,
`limiting the Petition to the aforementioned originally instituted grounds
`(Paper 7, 28−29). Paper 22. Upon consideration, we agree with the parties
`that the Petition should be limited to the originally instituted grounds.
`As stated above, our Institution Decision (Paper 7) originally
`instituted this inter partes review as to all of the challenged claims.
`Limiting the Petition to remove the newly instituted ground would not
`impact other instituted grounds. Neither party has submitted briefing as to
`the newly instituted ground. More importantly, at this late stage, as all of the
`substantive briefing has been filed by the parties and the oral hearing is
`scheduled for June 14, 2018, removing the newly instituted ground from
`consideration would promote efficient use of the Board’s resources and
`minimize unnecessary cost and delay to the parties, as well as facilitate just,
`speedy, and inexpensive resolution of the patentability dispute between the
`parties. See 37 C.F.R. § 42.1(b).
`In view of the foregoing, it is hereby
`ORDERED that the parties’ Joint Motion to Limit the Petition to
`remove the newly instituted ground from consideration is granted; and
`FURTHER ORDERED that the instant review is limited to the
`aforementioned originally instituted grounds (Paper 7, 28−29).
`
`
`
`3
`
`
`
`IPR2017-01137
`Patent 6,998,977 B2
`
`
`
`For PETITIONER:
`Dion Bregman
`Jason White
`Michael Lyons
`MORGAN, LEWIS & BOKIUS LLP
`dion.bregman@morganlewis.com
`jason.white@morganlewis.com
`michael.lyons@morganlewis.com
`
`
`
`For PATENT OWNER:
`W. Karl Renner
`Joshua A. Griswold
`Jeremy J. Monaldo
`Dan Smith
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`griswold@fr.com
`jjm@fr.com
`dsmith@fr.com
`
`4
`
`
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