`571-272-7822
`
`Paper 20
`Entered: May 15, 2018
`
`
`
`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 IPR2017-01921
`Patent 9,320,372 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
`
`
`
`
`
`
`
`IPR2017-01921
`Patent 9,320,372 B2
`
`The Petition challenges claims 1–20 of U.S. Patent No. 9,320,372 B2 on five
`grounds: (1) anticipation of claims 1–3, 6, and 10–18 based on Hochtritt1 (“Ground
`1”); (2) anticipation of claims 1–3, 8, 9, 12, and 13 based on Grosriez2 (“Ground
`2”) (3) anticipation of claims 1–3, 8, 9, and 12–14 based on Pigneul3 (“Ground 3”);
`obviousness of claims 1–20 based on Hochtritt (“Ground 4”); and (5) obviousness
`of claims 1–20 based on the combined teachings of Hochtritt and Grosriez
`(“Ground 5”). Paper 1, 8. In our institution decision, we ordered review of all
`challenged claims, but limited the proceeding to Grounds 1, 2, 4 (claims 1–3 and
`6–20), and 5. Paper 9, 31–32. On April 27, 2018, we modified our institution
`decision to include review of “all challenged claims and all of the grounds
`presented in the Petition.” Paper 17, 2.
`On May 10, 2018, without Board authorization, the parties filed a Notice of
`Stipulation to Withdraw Certain Grounds. Paper 18. Specifically, the parties
`stipulated to withdraw newly-instituted Ground 3 and Ground 4 (with respect to
`claims 4 and 5 only). Id. at 2. The parties further agreed “that these grounds were
`‘raised’ for purposes of 35 U.S.C. § 315(e).” Id.
`As set forth in 37 C.F.R. §§ 42.20(a) and (b), “[r]elief, other than a petition
`requesting the institution of trial, must be requested in the form of a motion,” and
`“[a] motion will not be entered without Board authorization.” The parties,
`therefore, should have sought authorization to file a joint request to remove the
`newly-instituted grounds from this proceeding. Our rules recognize, however, that
`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)).
`
`
`
`2
`
`
`
`IPR2017-01921
`Patent 9,320,372 B2
`
`See, e.g., 37 C.F.R. §§ 42.5(a) (“The Board may determine a proper course of
`conduct in a proceeding for any situation not specifically covered by this part and
`may enter non-final orders to administer the proceeding.”); 42.5(b) (“The Board
`may waive or suspend a requirement of parts 1, 41, and 42 and may place
`conditions on the waiver or suspension.”). Under the circumstances, where the
`parties have come to an agreement and jointly indicated so in writing, we waive the
`prior authorization requirement in this instance. Removing grounds from a
`dispute, pursuant to a joint request of the parties, serves our overarching goal of
`resolving this proceeding in a just, speedy, and inexpensive manner. 37 C.F.R.
`§ 42.1(b).
`
`Accordingly, it is
`ORDERED that, pursuant to the parties’ agreement set forth in Paper 18,
`Ground 3 and Ground 4 (with respect to claims 4 and 5 only), which were newly-
`instituted in Paper 17, are withdrawn from this proceeding; and
`FURTHER ORDERED that the Petition is limited to Grounds 1, 2, 4 (claims
`1–3 and 6–20), and 5.
`
`
`
`
`
`3
`
`
`
`IPR2017-01921
`Patent 9,320,372 B2
`
`PETITIONER:
`
`Rudolph A. Telscher, Jr.
`Daisy Manning
`HUSCH BLACKWELL LLP
`rtelscher@huschblackwell.com
`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
`
`
`
`
`
`
`4
`
`
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
