`571-272-7822
`
`
`
`
`
`
`Paper: 13
`Entered: May 11, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ABS GLOBAL, INC.,
`Petitioners,
`
`v.
`
`CYTONOME/ST, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-02097
`Patent 8,529,161 B2
`____________
`
`
`
`Before SCOTT A. DANIELS, BEVERLY M. BUNTING, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`DANIELS, Administrative Patent Judge.
`
`
`
`DECISION
`
`
`
`
`
`IPR2017-02097
`Patent 8,529,161 B2
`
`
`In our Decision on Institution, we determined that Petitioner
`
`demonstrated a reasonable likelihood that it would prevail in showing that at
`
`least 1 of the challenged claims of U.S. Patent No. 8,529,161 B2 is
`
`unpatentable. Paper 11, 2. In particular, we instituted review of certain of
`
`the challenged claims, i.e. claims 1, 4, 8, 9, 12, and 16–20, as anticipated by
`
`Wada. Id. at 38. We did not institute review, as anticipated, for claims 2–3,
`
`5–7, 10–11 and 13–15. See id. at 25–30. Also, we did not institute review
`
`on Petitioner’s challenge to claims 1–20 as obvious over Wada in view of
`
`Micronics 2001. Id. at 33–37.
`
`On April 24, 2018, the Supreme Court of the United States held that a
`
`decision to institute under 35 U.S.C. § 314 may not institute on fewer than
`
`all claims challenged in the petition. SAS Institute Inc. v. Iancu, 138 S. Ct.
`
`1348, 1355–58 (2018).
`
`Although Petitioner has not shown that it has a reasonable likelihood
`
`of prevailing in its challenges to certain claims and grounds, we nevertheless
`
`modify our Decision to institute on all of the challenges presented in the
`
`Petition. See USPTO’s Guidance on the Impact of SAS on AIA Trial
`
`Proceedings, https://www.uspto.gov/patents-application-process/patent-trial-
`
`and-appeal-board/trials/guidance-impact-sas-aia-trial (last visited May 3,
`
`2018) (“if the PTAB institutes a trial, the PTAB will institute on all
`
`challenges raised in the petition.”).
`
`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 or submit further briefing, 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.
`
`2
`
`
`
`IPR2017-02097
`Patent 8,529,161 B2
`
`
`In addition, the Board authorizes the parties to file, within one week
`
`of the date of this Order, a Joint Motion to Limit the Petition by removing
`
`the claims and grounds upon which we did not institute in our Decision on
`
`Institution. 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).
`
`In consideration of the foregoing, it is hereby:
`
`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 and Patent Owner shall confer
`
`to determine whether they desire any changes to the schedule or any further
`
`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; and
`
`FURTHER ORDERED that the parties are authorized to file, within
`
`one week of the date of this Order, a Joint Motion to Limit the Petition by
`
`removing the claims and grounds upon which we did not institute upon in
`
`our Decision on Institution.
`
`
`
`
`
`3
`
`
`
`IPR2017-02097
`Patent 8,529,161 B2
`
`PETITIONER:
`
`Jeffrey P. Kushan
`Lisa Schneider
`Paul J. Zegger
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`pzegger@sidley.com
`lschneider@sidley.com
`
`PATENT OWNER:
`
`Kirt S. O’Neill
`Daniel L. Moffett
`George A. L. Rosbrook
`Dorian Ojemen
`AKIN GUMP STRAUSS HAUER & FELD LLP
`koneill@akingump.com
`dmoffett@akingump.com
`arosbrook@akingump.com
`dojemen@akingump.com
`
`4
`
`
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