`571-272-7822
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`Paper No. 24
`Entered: May 3, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG ELECTRONICS CO., LTD.; AND
`SAMSUNG ELECTRONICS AMERICA, INC.
`Petitioners
`
`v.
`
`IMAGE PROCESSING TECHNOLOGIES, LLC
`Patent Owner
`____________
`
` IPR2017-01190 (Patent 6,717,518 B1)1
`IPR2017-01218 (Patent 8,983,134 B2)
`
`____________
`
`
`Before JONI Y. CHANG, MIRIAM L. QUINN, and
`SHEILA F. McSHANE, Administrative Patent Judges.
`
`McSHANE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`1 This Order addresses issues that are identical in each of these cases.
`Therefore, we 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 without prior authorization.
`
`
`
`IPR2017-01190 (Patent 6,717,518 B1)
`IPR2017-01218 (Patent 8,983,134 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 Decisions on Institution in these proceedings, we
`determined that Petitioner demonstrated a reasonable likelihood that it would
`prevail in showing that at least one of the challenged claims of U.S. Patent
`No. 6,717,518 is unpatentable in IPR2017-01190 and at least one of the
`challenged claims of U.S. Patent No. 8,983,134 is unpatentable in IPR2017-
`01218. See IPR2017-01190, Paper 11, 26; IPR2017-01218, Paper 11, 29.
`We modify each of our institution decisions to include all of the challenged
`claims and all of the grounds presented in the respective 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.
`The parties shall confer to discuss the impact, if any, of this Order on
`the current schedules. If, after conferring, the parties wish to change the
`schedules or submit further briefing, 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 each of our institution decisions is modified to
`include review of all challenged claims and all grounds presented in the
`respective Petition; and
`
`FURTHER ORDERED that Petitioner and Patent Owner shall confer
`to determine whether they desire any changes to the schedules or any further
`briefing, and, if so, shall request a conference call with the panel to seek
`
`2
`
`
`
`IPR2017-01190 (Patent 6,717,518 B1)
`IPR2017-01218 (Patent 8,983,134 B2)
`
`authorization for such changes or briefing within one week of the date of this
`Order.
`
`
`
`
`
`3
`
`
`
`IPR2017-01190 (Patent 6,717,518 B1)
`IPR2017-01218 (Patent 8,983,134 B2)
`
`
`PETITIONER:
`John Kappos
`Nick Whilt
`Brian M. Cook
`Marc Pensabene
`Clarence Rowland
`O’MELVENY & MYERS LLP
`jkappos@omm.com
`nwhilt@omm.com
`bcook@omm.com
`mpensabene@omm.com
`crowland@omm.com
`
`
`PATENT OWNER:
`Chris Coulson
`ANDREWS KURTH KENYON LLP
`ccoulson@kenyon.com
`
`
`4
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`