`Tel: 571-272-7822
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`
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`Paper 17
`Entered: May 7, 2018
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ZSCALER, INC.,
`Petitioner
`
`v.
`
`SEMANTEC CORPORATION,
`Patent Owner
`____________
`
`Case IPR2017-01342
`Patent 8,661,498 B2
`
`____________
`
`
`
`Before RAMA G. ELLURU, DANIEL N. FISHMAN, and
`STACEY G. WHITE, Administrative Patent Judges.
`
`FISHMAN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`IPR2017-01342
`Patent 8,661,498 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 Decision on Institution, we determined that Petitioner
`demonstrated a reasonable likelihood that it would establish that at least one
`of the challenged claims of the ’498 patent is unpatentable. Paper 10, 2, 27.
`We modify our institution decision to institute on all of the challenged
`claims and all of the grounds presented in the Petition.
`The parties shall confer to discuss the impact, if any, of this Order on
`the current schedule and to discuss the possibility of filing a Joint Motion to
`Limit the Petition by removing the previously non-instituted claims and/or
`grounds from this proceeding. If, after conferring, the parties wish to change
`the schedule, file a Joint Motion to Limit the Petition, 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,
`motion, or briefing.
`In consideration of the foregoing, it is hereby:
`ORDERED that our institution decision is modified to include review
`of all challenged claims and all grounds presented in the Petition; and
`FURTHER ORDERED that Petitioner and Patent Owner shall confer
`to determine whether they desire: any changes to the schedule, filing of a
`Joint Motion to Limit the Petition, or any further briefing, and, if so, shall
`request a conference call with the panel to seek authorization for such
`changes, motion, or briefing within one week of the date of this Order.
`
`
`
`
`2
`
`
`
`IPR2017-01342
`Patent 8,661,498 B2
`
`PETITIONER:
`Leo L. Lam
`KEKER, VAN NEST & PETERS LLP
`llam@kvn.com
`
`PATENT OWNER:
`
`Chad C. Walters
`Kurt M. Pankratz
`James Williams
`Harrison G. Rich
`BAKER BOTTS L.L.P.
`chad.walters@bakerbotts.com
`kurt.pankratz@bakerbotts.com
`james.williams@bakerbotts.com
`harrison.rich@bakerbotts.com
`
`
`
`3
`
`