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`Paper: 20
`Entered: April 27, 2018
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`Trials@uspto.gov
`571-272-7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
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`AFTON CHEMICAL CORPORATION,
`Petitioner,
`
`v.
`
`INFINEUM INTERNATIONAL LIMITED,
`Patent Owner.
`
`
`
`Case IPR2017-01321
`Patent 8,076,274 B2
`
`
`
`
`
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`
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`Before JON B. TORNQUIST, JEFFREY W. ABRAHAM,
`and MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
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`
`
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`
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`
`
`IPR2017-01321
`Patent 8,076,274 B2
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`
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`On April 24, 2018, the Supreme Court held that a final written
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`decision under 35 U.S.C. § 318(a) must decide the patentability of all claims
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`challenged in the petition. SAS Inst., Inc. v. Iancu, No. 16-696, 2018 WL
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`1914661, at *10 (U.S. Apr. 24, 2018). In our Decision on Institution, we
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`determined that Petitioner demonstrated a reasonable likelihood that it would
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`establish that at least one of the challenged claims of the ’274 patent is
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`unpatentable. Paper 8, 26. Pursuant to the holding in SAS, we modify our
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`institution decision to institute on all of the challenged claims and all of the
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`grounds presented in the Petition.
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`The parties remain free to stipulate to changes in the schedule under
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`the terms of the Scheduling Order. If, after conferring, the parties wish to
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`otherwise change the schedule or submit briefing not set forth in the
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`Scheduling Order, the parties must, within one week of the date of this
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`Order, request a conference call with the panel to seek authorization for such
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`changes or briefing.
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`In consideration of the foregoing, it is hereby:
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`ORDERED that, pursuant to 35 U.S.C. § 314(a), we modify our
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`institution decision to include review of all challenged claims and all
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`grounds presented in the Petition; and
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`FURTHER ORDERED that Petitioner and Patent Owner shall confer
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`to determine whether they desire any changes to the schedule or briefing not
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`already permitted under the Scheduling Order, and, if so, request a
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`conference call with the panel to seek authorization for such changes or
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`briefing within one week of the date of this Order.
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`
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`2
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`
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`IPR2017-01321
`Patent 8,076,274 B2
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`
`PETITIONER:
`
`Matias Ferrario
`mferrario@kilpatricktownsend.com
`
`Keith Fredlake
`kfredlake@kilpatricktownsend.com
`
`
`PATENT OWNER:
`
`Elizabeth Gardner
`e1aptabdocket@orrick.com
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`K. Patrick Herman
`p52ptabdocket@orrick.com
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`3
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