`
`Paper: 22
`Entered: May 4, 2018
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ITRON, INC.,
`Petitioner,
`
`v.
`
`SMART METER TECHNOLOGIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01199
`Patent 7,058,524 B2
`____________
`
`
`
`Before BRYAN F. MOORE, BARBARA A. BENOIT, and
`JOHN D. HAMANN, Administrative Patent Judges.
`
`HAMANN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2017-01199
`Patent 7,058,524 B2
`
`
`
`On April 24, 2018, the Supreme Court held that a decision to institute
`under 35 U.S.C. § 314 may not institute on fewer than all claims challenged
`in the petition. SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S. Apr.
`24, 2018). In our institution decision, we determined that Petitioner
`demonstrated a reasonable likelihood that it would establish that at least one
`of the challenged claims of the ’524 patent is unpatentable for one of the
`three grounds asserted in the Petition. Paper 8, 20. We instituted trial for all
`of the challenged claims on this one ground (i.e., claims 17–22 under 35
`U.S.C. § 103 over Suh). Id.
`We modify our institution decision to institute also on the two
`additional grounds presented in the Petition. Each of these grounds
`challenged claims 17–22. Id. at 4. Accordingly, we modify our institution
`decision to add the grounds of (i) claims 17–22 under 35 U.S.C. § 103 over
`Suh and Bartone and (ii) claims 17–22 under 35 U.S.C. § 103 over Bartone
`and Villicana. Id. (citing Pet. 3) (identifying the grounds asserted in the
`Petition).
`The parties shall confer to discuss the impact, if any, of this Order on
`the current schedule. If, after conferring, the parties wish to change the
`schedule or submit further briefing, the parties must, on or before May 9,
`2018, request a conference call with the panel to seek authorization for such
`changes or briefing. This conference call, if requested, will be held at 10:00
`a.m. EDT on May 11, 2018.
`As an alternative, we authorize the parties to file, within one week of
`the date of this Order, a Joint Motion to Limit the Petition by removing the
`grounds upon which we did not institute in our institution decision. See
`
`2
`
`
`
`IPR2017-01199
`Patent 7,058,524 B2
`
`
`id.; see also Apotex Inc., v. OSI Pharms., Inc., Case IPR2016-01284 (PTAB
`Apr. 3, 2017) (Paper 19) (granting, after institution, a joint motion to limit
`the petition by removing a patent claim that was included for trial in the
`institution decision).
`In consideration of the foregoing, it is hereby:
`ORDERED that our institution decision is modified to add the
`grounds of (i) claims 17–22 under 35 U.S.C. § 103 over Suh and Bartone
`and (ii) claims 17–22 under 35 U.S.C. § 103 over Bartone and Villicana; and
`FURTHER ORDERED that Petitioner and Patent Owner shall confer
`to determine whether they desire any changes to the schedule or any further
`briefing, and, if so, shall request on or before May 9, 2018 a conference call
`with the panel to seek authorization for such changes or briefing.
`
`
`
`3
`
`
`
`IPR2017-01199
`Patent 7,058,524 B2
`
`
`PETITIONER:
`Kirk T. Bradley
`Christopher TL Douglas
`ALSTON & BIRD LLP
`kirk.bradley@alston.com
`christopher.douglas@alston.com
`
`PATENT OWNER:
`Decker A. Cammack
`WHITAKER CHALK SWINDLE & SCHWARTZ PLLC
`dcammack@whitakerchalk.com
`
`4
`
`
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