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`Paper: 23
`Entered: May 8, 2018
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FACEBOOK, INC.,
`Petitioner,
`
`v.
`
`ZKEY INVESTMENTS, LLC.,
`Patent Owner.
`_______________
`
`Case IPR2017-01278
`Patent 6,820,204 B1
`____________
`
`
`
`Before ROBERT J. WEINSCHENK, MINN CHUNG,
`and CHRISTA P. ZADO, Administrative Patent Judges.
`
`ZADO, Administrative Patent Judge.
`
`
`ORDER
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2017-01278
`Patent 6,820,204 B1
`
`
`
`On April 24, 2018, the Supreme Court held that a decision to institute
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`under 35 U.S.C. § 314 may not institute on less than all claims challenged in
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`the petition. SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at *10 (U.S. Apr.
`
`24, 2018). In our Decision on Institution, we determined that Petitioner
`
`demonstrated a reasonable likelihood that it would establish that at least one
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`of the challenged claims of the ’204 patent is unpatentable. Paper 9, 30–31.
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`We instituted inter partes review with regard to claims 1–3 and 16 of the
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`’204 patent, but not with respect to claims 4, 5, 8–11, and 17, which also
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`were challenged in the Petition. Paper 2, 1. Subsequent to our Decision on
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`Institution, Patent Owner requested adverse judgement as to the instituted
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`claims of the ’204 patent. Paper 21. We have not entered an order with
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`regard to Patent Owner’s motion requesting adverse judgment. We modify
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`our institution decision to institute on all of the challenged claims and all of
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`the grounds presented in the Petition.
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`The parties shall confer to discuss the impact, if any, of this Order on
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`the current schedule. If, after conferring, the parties wish to change the
`
`schedule, submit further briefing, or discuss the impact of this Order on
`
`Patent Owner’s request for adverse judgment, the parties must, within one
`
`week of the date of this Order, request a conference call with the panel to
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`seek authorization for such changes or briefing or to discuss the impact of
`
`this Order on Patent Owner’s request for adverse judgment.
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`In consideration of the foregoing, it is hereby:
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`ORDERED that our institution decision is modified to include review
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`of all challenged claims and all grounds presented in the Petition; and
`
`2
`
`
`
`IPR2017-01278
`Patent 6,820,204 B1
`
`
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`FURTHER ORDERED that Petitioner and Patent Owner shall confer
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`as set forth above, and, if after conferring, the parties wish to change the
`
`schedule, submit further briefing, or discuss the impact of this Order on
`
`Patent Owner’s request for adverse judgment, the parties shall request a
`
`conference call with the panel to seek authorization for such changes or
`
`briefing or to discuss the impact of this Order on Patent Owner’s request for
`
`adverse judgment within one week of the date of this Order.
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`
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`3
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`
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`IPR2017-01278
`Patent 6,820,204 B1
`
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`PETITIONERS:
`
`Heidi Keefe
`Andrew Mace
`Mark R. Weinstein (pro hac vice)
`COOLEY LLP
`hkeefe@cooley.com
`amace@cooley.com
`mweinstein@cooley.com
`
`
`PATENT OWNER:
`
`Michael Heim
`Eric J. Enger (pro hac vice)
`R. Allan Bullwinkel (pro hac vice)
`HEIM PAYNE & CHORUSH, LLP
`mheim@hpcllp.com
`eenger@hpcllp.com
`abullwinkel@hpcllp.com
`
`4
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`