`571-272-7822
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`Paper 21
`Entered: May 16, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CASCADES CANADA ULC and
`TARZANA ENTERPRISES, LLC,
`Petitioner,
`
`v.
`
`ESSITY HYGIENE AND HEALTH AB,
`Patent Owner.
`____________
`
`Case IPR2017-01902
`Patent 8,597,761 B2
`____________
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN, and
`JON B. TORNQUIST, Administrative Patent Judges.
`
`KOKOSKI, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`Withdrawing Grounds in the Petition
`37 C.F.R. § 42.5
`
`
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`
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`IPR2017-01902
`Patent 8,597,761 B2
`
`The Petition in this proceeding challenges claims 1–26 of U.S. Patent
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`No. 8,597,761 B2 on five grounds: (1) anticipation of claims 1–3, 6, 10–18, and
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`21, and 23 based on Hochtritt1 (“Ground 1”); (2) anticipation of claims 1–3, 8, 9,
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`12, 13, and 23 based on Grosriez2 (“Ground 2”) (3) anticipation of claims 1–3, 8, 9,
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`12–14, and 23 based on Pigneul3 (“Ground 3”); obviousness of claims 1–26 based
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`on Hochtritt (“Ground 4”); and (5) obviousness of claims 1–26 based on the
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`combined teachings of Hochtritt and Grosriez (“Ground 5”). Paper 3, 8. In our
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`institution decision, we ordered review of all challenged claims, but limited the
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`proceeding to Grounds 1, 2, 4 (claims 1–3, 6–23, and 26), and 5. Paper 10, 32. On
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`April 27, 2018, we modified our institution decision to include review of “all
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`challenged claims and all of the grounds presented in the Petition.” Paper 18, 2.
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`On May 10, 2018, without Board authorization, the parties filed a Notice of
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`Stipulation to Withdraw Certain Grounds. Paper 19. Specifically, the parties
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`stipulated to withdraw newly-instituted Ground 3 and Ground 4 (with respect to
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`claims 4, 5, 24, and 25 only). Id. at 2. The parties further agreed “that these
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`grounds were ‘raised’ for purposes of 35 U.S.C. § 315(e).” Id.
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`As set forth in 37 C.F.R. §§ 42.20(a) and (b), “[r]elief, other than a petition
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`requesting the institution of trial, must be requested in the form of a motion,” and
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`“[a] motion will not be entered without Board authorization.” The parties,
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`therefore, should have sought authorization to file a joint request to remove the
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`newly-instituted grounds from this proceeding. Our rules recognize, however, that
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`there are instances when failure to comply with the regulations may be mitigated.
`
`
`1 U.S. Patent App. Pub. No. 2005/0058807 A1, published March 17, 2005 (Ex.
`1015).
`2 U.S. 6,602,575 B2, issued Aug. 5, 2003 (Ex. 1021).
`3 European Patent App. Pub. No. 0 286 538 B1, published Oct. 12, 1998 (Exs.
`1013, 1023 (English translation)).
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`2
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`IPR2017-01902
`Patent 8,597,761 B2
`
`See, e.g., 37 C.F.R. §§ 42.5(a) (“The Board may determine a proper course of
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`conduct in a proceeding for any situation not specifically covered by this part and
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`may enter non-final orders to administer the proceeding.”); 42.5(b) (“The Board
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`may waive or suspend a requirement of parts 1, 41, and 42 and may place
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`conditions on the waiver or suspension.”). Under the circumstances, where the
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`parties have come to an agreement and jointly indicated so in writing, we waive the
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`prior authorization requirement in this instance. Removing grounds from a
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`dispute, pursuant to a joint request of the parties, serves our overarching goal of
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`resolving this proceeding in a just, speedy, and inexpensive manner. 37 C.F.R.
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`§ 42.1(b).
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`
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`Accordingly, it is
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`ORDERED that, pursuant to the parties’ agreement set forth in Paper 19,
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`Ground 3 and Ground 4 (with respect to claims 4, 5, 24, and 25 only), which were
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`newly-instituted in Paper 18, are withdrawn from this proceeding; and
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`FURTHER ORDERED that the Petition is limited to Grounds 1, 2, 4
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`(claims 1–3, 6–23, and 26), and 5.
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`3
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`IPR2017-01902
`Patent 8,597,761 B2
`
`PETITIONER:
`
`Rudolph A. Telscher, Jr.
`Daisy Manning
`HUSCH BLACKWELL LLP
`Ptab-rtelscher@huschblackwell.com
`Ptab-dmanning@huschblackwell.com
`
`
`
`PATENT OWNER:
`
`David A. Mancino
`William F. Smith
`Kevin Flynn
`BAKER & HOSTETLER LLP
`dmancino@bakerlaw.com
`wsmith@bakerlaw.com
`kflynn@bakerlaw.com
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`4
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