Trials@uspto.gov
`571-272-7822
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` Paper: 32
` Entered: May 16, 2018
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROQUETTE FRERES, S.A.,
`Petitioner,
`
`v.
`
`TATE & LYLE INGREDIENTS AMERICAS LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01506
`Patent 7,608,436 B2
`____________
`
`
`Before LORA M. GREEN, GRACE KARAFFA OBERMANN,
`and JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5
`
`
`
`
`
`571-272-7822
`
`
`
`
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`
`
`
`
` Paper: 32
` Entered: May 16, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROQUETTE FRERES, S.A.,
`Petitioner,
`
`v.
`
`TATE & LYLE INGREDIENTS AMERICAS LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01506
`Patent 7,608,436 B2
`____________
`
`
`Before LORA M. GREEN, GRACE KARAFFA OBERMANN,
`and JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5
`
`
`
`
`
`
`IPR2017-01506
`Patent 7,608,436 B2
`
`
`DISCUSSION
`On April 24, 2018, the Supreme Court held that, in a decision to
`institute an inter partes review under 35 U.S.C. § 314, the Board is not
`authorized to order a trial to proceed on fewer than all claims challenged in a
`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 U.S. Patent 7,608,436 is unpatentable.
`Paper 18, 2, 9–10, 13–14. We modify our institution decision to institute on
`all claims challenged and all grounds presented in the Petition.
`The introduction of newly instituted claims and grounds at this stage
`of the proceeding presents two issues. The first pertains to the impact of the
`refund approval entered on April 5, 2018. See Paper 28 (request for refund);
`Paper 29 (notice of refund approval). The second relates to whether a
`conference call is necessary to discuss any need for additional briefing or a
`schedule change that cannot be accomplished by stipulation. See Paper 19, 2
`(scheduling order, authorizing parties to stipulate to schedule changes for
`Due Dates 1 through 5 (earlier or later, but no later than Due Date 6)). We
`address each issue in turn below.
`
`A. Impact of the Refund Request and Approval
`Petitioner previously requested and received a refund of the post-
`institution fee paid in connection with 15 patent claims that were denied
`review in our institution decision. Paper 28 (request for refund); Paper 29
`(notice of approval of refund). We, hereby, institute review of all claims
`challenged in the Petition. Accordingly, we require Petitioner to repay the
`post-institution fee that was refunded in the amount of $6,000.00. Paper 28,
`
`2
`
`
`
`IPR2017-01506
`Patent 7,608,436 B2
`
`1 (requesting refund of “fee in the amount of $6000”); Paper 29, 1 (notice of
`refund to Petitioner’s deposit account in “amount of $6,000.00”).
`Repayment of the refunded post-institution fee in the amount of
`$6,000.00 is due within five (5) business days of the date of this Order.
`Given that our authority to institute review is limited to a “binary choice”
`between proceeding on all, or none, of the claims challenged in a petition,
`SAS at *5, if repayment of the refunded post-institution fee is not timely
`made, the Board shall terminate this proceeding in its entirety.
`
`B. Invitation for Conference Call
`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 (beyond that permitted by stipulation (Paper 19, 2)) or submit
`additional briefing directed to the newly instituted claims or grounds, 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 or briefing. If the
`parties do not request such a call, the parties waive any request for additional
`briefing on the newly instituted claims and grounds.
`As an alternative, if repayment of the refunded post-institution fee in
`the amount of $6,000.00 is timely made, the parties are authorized to file,
`within one week of the date of this Order, a Joint Motion to Limit the
`Petition to remove from dispute the patent claims and grounds of
`unpatentability newly instituted by this Order. 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).
`
`
`
`3
`
`
`
`IPR2017-01506
`Patent 7,608,436 B2
`
`
`ORDER
`
`It is
`ORDERED that our institution decision is modified to include review
`
`of all challenged claims and all grounds presented in the Petition;
`FURTHER ORDERED that Petitioner is required to repay the
`refunded post-institution fee in the amount of $6,000.00;
`FURTHER ORDERED that repayment of the refunded post-
`institution fee is due within five (5) business days of the date this Order;
`FURTHER ORDERED that, if repayment of the refunded post-
`institution fee is not timely made, this proceeding shall be terminated in its
`entirety;
`FURTHER ORDERED that Petitioner and Patent Owner shall confer
`to determine whether they desire any changes to the schedule (that cannot be
`accomplished by authorized stipulation (Paper 19, 2)) or additional briefing,
`and, if so, shall request a conference call with the panel to seek authorization
`for such changes or briefing within one week of the date of this Order;
`FURTHER ORDERED that, if repayment of the refunded post-
`institution fee is timely made, the parties are authorized to file, within one
`week of the date of this Order, a Joint Motion to Limit the Petition to
`remove from dispute the patent claims and grounds of unpatentability newly
`instituted by this Order.
`
`
`
`
`4
`
`
`
`IPR2017-01506
`Patent 7,608,436 B2
`
`PETITIONER:
`David Glandorf
`GIBSON, DUNN & CRUTCHER LLP
`dglandorf@gibsondunn.com
`
`
`
`PATENT OWNER:
`Paul H. Berghoff
`James V. Suggs
`S. Richard Carden
`Andrew W. Williams
`McDONNELL BOEHNEN HULBERT & BERGHOFF LLP
`Berghoff@mbhb.com
`Suggs@mbhb.com
`Carden@mbhb.com
`Williams@mbhb.com
`
`
`5
`
`
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