`571.272.7822
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` Paper No. 15
`Entered: May 2, 2018
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`UNITED INDUSTRIES CORPORATION,
`Petitioner,
`v.
`SUSAN McKNIGHT, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01687
`Patent 9,066,511 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
`
`
`
`
`United Industries Corporation (“Petitioner”) filed a Petition (Paper 2)
`requesting institution of inter partes review of claims 1–12 of U.S. Patent
`No. 9,066,511 B2 (Ex. 1001, “the ’511 patent”). On January 23, 2018, we
`instituted an inter partes review of all challenged claims of the ’511 patent
`
`
`
`
`
`IPR2017-01687
`Patent 9,066,511 B2
`
`on a subset of grounds advanced in the Petition. Paper 7 (“Institution
`Decision” or “Dec.”), 24. Susan McKnight, Inc. (“Patent Owner”) filed a
`Patent Owner Response on April 24, 2018. Paper 14. Petitioner’s reply to
`Patent Owner’s Response is 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 ’511 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
`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
`
`2
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`IPR2017-01687
`Patent 9,066,511 B2
`
`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 ’511 patent on all grounds presented in the
`Petition, as follows:
`Claim(s) challenged
`Basis
`References
`§ 103 1–4 and 7–10
`Anderson,1 Lang,2 and Lyng3
`Anderson, Lang, Lyng, and Jennerich4 § 103 5, 6, 11, and 12
`Denton,5 Lang, Lyng, and Jennerich
`§ 103 1–12
`Beach,6 Lang, and McKnight ’8127
`§ 103 1–4 and 7–10
`
`
`
`FURTHER ORDERED that Petitioner and Patent Owner shall confer
`to determine whether they desire any changes to the schedule or 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. 5,996,531, issued December 7, 1999 (Ex. 1003,
`“Anderson”).
`2 U.S. Patent App. No. 2007/0044372 A1, published March 1, 2007
`(Ex. 1008, “Lang”).
`3 U.S. Patent App. No. 2005/0138858 A1, published June 30, 2005
`(Ex. 1007, “Lyng”).
`4 U.S. Patent No. 2,167,978, issued August 1, 1939 (Ex. 1002, “Jennerich”).
`5 U.S. Patent No. 223,321, issued January 6, 1880 (Ex. 1004, “Denton”).
`6 U.S. Patent No. 57,036, issued August 7, 1866 (Ex. 1009, “Beach”).
`7 U.S. Patent No. 8,966,812 B2, issued March 3, 2015 (Ex. 1013,
`“McKnight ’812”).
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`3
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`IPR2017-01687
`Patent 9,066,511 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
`
`4
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