Trials@uspto.gov
`571.272.7822
`
`
`
`
`
` Paper No. 17
`Entered: May 2, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`UNITED INDUSTRIES CORPORATION,
`Petitioner,
`v.
`SUSAN McKNIGHT, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01686
`Patent 9,253,973 B2
`____________
`
`
`Before JAMES A. TARTAL, TIMOTHY J. GOODSON, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`ORDER
`
`Conduct of Proceeding
`Modifying Institution Decision to Institute Inter Partes Review on
`All Challenged Claims and Grounds Presented in the Petition
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
`
` Paper No. 17
`Entered: May 2, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`UNITED INDUSTRIES CORPORATION,
`Petitioner,
`v.
`SUSAN McKNIGHT, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01686
`Patent 9,253,973 B2
`____________
`
`
`Before JAMES A. TARTAL, TIMOTHY J. GOODSON, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`TARTAL, Administrative Patent Judge.
`
`
`ORDER
`
`Conduct of Proceeding
`Modifying Institution Decision to Institute Inter Partes Review on
`All Challenged Claims and Grounds Presented in the Petition
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2017-01686
`Patent 9,253,973 B2
`
`
`United Industries Corporation (“Petitioner”) filed a Petition (Paper 2)
`requesting institution of inter partes review of claims 1–17 of U.S. Patent
`No. 9,253,973 B2 (Ex. 1001, “the ’973 patent”). On January 23, 2018, we
`instituted an inter partes review of all challenged claims of the ’973 patent
`on a subset of grounds advanced in the Petition. Paper 7 (“Institution
`Decision” or “Dec.”), 29. Susan McKnight, Inc. (“Patent Owner”) filed a
`Patent Owner Response (Paper 15) and a Motion to Amend (Paper 16) on
`April 24, 2018. Petitioner’s reply to Patent Owner’s Response and
`opposition to Patent Owner’s Motion to Amend are currently due on July 25,
`2018. Paper 8, 8.
`On April 24, 2018, the Supreme Court held in SAS Inst., Inc. v. Iancu
`that a decision to institute under 35 U.S.C. § 314 may not institute on less
`than all claims challenged in the petition. 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 ’973 patent is unpatentable. Dec. at 2. We
`modify our Institution Decision to institute on all of the grounds presented in
`the Petition.
`This Order introduces grounds from the Petition into this proceeding
`that were not previously instituted. The parties are to meet and confer to
`discuss their positions with respect to the impact of SAS on this proceeding.
`The parties should discuss their proposals to accommodate the addition of
`grounds into this proceeding and shall endeavor to reach agreement and
`develop a joint proposal, including any requested additional briefing and the
`length of such briefing. Furthermore, the parties should discuss a proposed
`revision to the Scheduling Order if needed to achieve the parties’ proposals
`
`2
`
`
`
`IPR2017-01686
`Patent 9,253,973 B2
`
`with the aim of concluding this proceeding within the twelve-month
`timeframe established by statute.
`After conferring, the parties must, within seven (7) days of the date of
`this Order, submit a proposal (or, if the parties do not agree on a joint
`proposal, the parties must submit their respective proposals) in an email to
`the Board, in which the parties also request a conference call to discuss any
`additional briefing and modification of the schedule. The parties’ email
`must include proposed times for such a call when both parties are available.
`In consideration of the foregoing, it is hereby:
`ORDERED that our Institution Decision is modified to include review
`of all challenged claims of the ’973 patent on all grounds presented in the
`Petition, as follows:
`
`3
`
`
`
`IPR2017-01686
`Patent 9,253,973 B2
`
`
`§ 103
`
`1–17
`
`§ 103
`
`1–7, 10, 11, and 14–17
`
`Claims Challenged
`1–17
`1–3, 7, 10, 14, 16, and 17
`4–6, 10, 11, 14, and 15
`8, 9, 12, and 13
`
`Basis
`References
`§ 103
`Jennerich,1 Lyng,2 and Jennings3
`§ 103
`Anderson,4 Dempster,5 and Lang6
`Anderson, Dempster, Lang, and Lyng § 103
`Anderson, Dempster, Lang, and
`§ 103
`Metcalfe7
`Denton,8 Jennerich, and
`McKnight ’8129
`McGrath10 and Lyng
`
`FURTHER ORDERED that Petitioner and Patent Owner shall confer
`to determine whether they desire any changes to the schedule or any further
`briefing, and, if so, shall provide their proposals and request a conference
`call with the Board to seek authorization for such changes or briefing within
`seven (7) days of the date of this Order.
`
`
`
`1 U.S. Patent No. 2,167,978, issued Aug. 1, 1939 (Ex. 1002, “Jennerich”)
`2 U.S. Patent App. No. 2005/0138858 A1, published June 30, 2005
`(Ex. 1007, “Lyng”).
`3 U.S. Patent No. 400,460, issued April 2, 1889 (Ex. 1006, “Jennings”)
`(citations to Jennings are to the page number and line number).
`4 U.S. Patent No. 5,996,531, issued December 7, 1999 (Ex. 1003,
`“Anderson”).
`5 U.S. Patent No. 1,024,767, issued April 30, 1912 (Ex. 1024, “Dempster”).
`6 U.S. Patent App. No. 2007/0044372 A1, published March 1, 2007
`(Ex. 1008, “Lang”).
`7 U.S. Patent No. 7,299,587 B1, issued Nov. 27, 2007 (Ex. 1012,
`“Metcalfe”).
`8 U.S. Patent No. 223,321, issued January 6, 1880 (Ex. 1004, “Denton”).
`9 U.S. Patent No. 8,966,812 B2, issued March 3, 2015 (Ex. 1013,
`“McKnight ’812”).
`10 U.S. Design Patent No. 335,940, issued May 25, 1993) (Ex. 1005,
`“McGrath”).
`
`4
`
`
`
`IPR2017-01686
`Patent 9,253,973 B2
`
`PETITIONER:
`
`Michael R. Houston
`mhouston@foley.com
`
`Jeffrey R. Lomprey
`jlomprey@foley.com
`FOLEY & LARDNER LLP
`
`
`PATENT OWNER:
`
`John Linderman
`lind@ip-lawyers.com
`
`Justin Durelli
`durelli@ip-lawyers.com
`MCCORMICK, PAULDING & HUBER LLP
`
`
`5
`
`
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
