`571-272-7822
`
`
`
`
`
`
`Paper: 28
`Entered: May 24, 2018
`
`
`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
`Granting Joint Motion to Limit the Petition
`37 C.F.R. § 42.20
`
`
`
`
`
`
`
`IPR2017-01199
`Patent No. 7,058,524 B2
`
`
`In this proceeding, we initially instituted an inter partes review only
`as to Count 1, which alleges claims 17–22 are unpatentable over Suh under
`35 U.S.C. § 103(a). Paper 8, 20. We did not institute an inter partes review
`as to Count 2, which alleges claims 17–22 are unpatentable over Suh and
`Bartone under 35 U.S.C. § 103(a), and Count 3, which alleges claims 17–22
`are unpatentable over Bartone and Villicana under 35 U.S.C. § 103(a). Id. at
`19–20. Subsequently, we modified our institution decision to include
`Counts 2 and 3 in light of the Supreme Court’s SAS Institute Inc. v. Iancu,
`138 S. Ct. 1348 (2018) decision. Paper 22 (modifying the Decision on
`Institution to include all grounds presented in the Petition).
`On May 10, 2018, with our prior authorization, the parties filed a Joint
`Motion to Limit the Petition. Paper 23; see also Paper 22, 2–3. The parties
`“jointly move[d] to limit the petition for inter partes review IPR2017-01199
`to Count 1 (challenging claims 17-22 of U.S. Patent No. 7,058,524 under 35
`U.S.C. § 103 over Suh).” Paper 23, 1. More specifically, the parties
`requested “that the Board remove the newly instituted grounds, viz., Count 2
`(challenging claims 17-22 under 35 U.S.C. § 103 over Suh and Bartone) and
`Count 3 (challenging claims 17-22 under 35 U.S.C. § 103 over Bartone and
`Villicana), from this proceeding.” Id.
`Removing grounds from dispute, pursuant to a joint request of the
`parties, serves our overarching goal of resolving this proceeding in a just,
`speedy, and inexpensive manner. 37 C.F.R. § 42.1(b); see, e.g., 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); SAS, 138
`S. Ct. at 1357.
`
`2
`
`
`
`IPR2017-01199
`Patent No. 7,058,524 B2
`
`
`Accordingly, we grant the Joint Motion to Limit the Petition. As
`such, Counts 2 and 3 are removed from dispute in this proceeding. The sole
`ground of unpatentability remaining in dispute is Count 1, which challenges
`claims 17–22 under 35 U.S.C. § 103(a) over Suh.
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motion to Limit the Petition is granted;
`FURTHER ORDERED that the Petition is limited to the Count 1
`which challenges claims 17–22 based on obviousness under 35 U.S.C.
`§ 103(a) over Suh.
`
`
`
`
`
`
`
`3
`
`
`
`IPR2017-01199
`Patent No. 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
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
