`
`Paper: 12
`Entered: April 27, 2018
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`CASCADES CANADA ULC,
`Petitioner,
`
`v.
`
`ESSITY PROFESSIONAL HYGIENE NORTH AMERICA LLC,1
`Patent Owner.
`
`
`
`Case IPR2017-02198
`Patent 8,273,443 B2
`
`
`
`
`
`
`
`
`
`Before JO-ANNE M. KOKOSKI, KRISTINA M. KALAN,
`and JON B. TORNQUIST, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 Patent Owner’s name has been legally changed from SCA Tissue North
`America, LLC, the originally-named Patent Owner in this proceeding, to
`Essity Professional Hygiene North America LLC. Paper 10.
`
`
`
`IPR2017-02198
`Patent 8,273,443 B2
`
`
`
`On April 24, 2018, the Supreme Court held that a final written
`
`decision under 35 U.S.C. § 318(a) must decide the patentability of all claims
`
`challenged in the petition. SAS Inst., Inc. v. Iancu, No. 16-696, 2018 WL
`
`1914661, at *10 (U.S. Apr. 24, 2018). In our Decision on Institution, we
`
`determined that Petitioner demonstrated a reasonable likelihood that it would
`
`establish that at least one of the challenged claims of the ’443 patent is
`
`unpatentable. Paper 7, 28–29. Pursuant to the holding in SAS, we modify
`
`our institution decision to institute on all of the challenged claims and all of
`
`the grounds presented in the Petition.
`
`The parties remain free to stipulate to changes in the schedule under
`
`the terms of the Scheduling Order. If, after conferring, the parties wish to
`
`otherwise change the schedule or submit briefing not set forth in the
`
`Scheduling Order, 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.
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that, pursuant to 35 U.S.C. § 314(a), we modify our
`
`institution decision 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 briefing not
`
`already permitted under the Scheduling Order, and, if so, request a
`
`conference call with the panel to seek authorization for such changes or
`
`briefing within one week of the date of this Order.
`
`
`
`2
`
`
`
`IPR2017-02198
`Patent 8,273,443 B2
`
`
`PETITIONER:
`
`Rudolph Telscher
`ptab-rtelscher@huschblackwell.com
`
`Daisy Manning
`ptab-dmanning@huschblackwell.com
`
`
`
`PATENT OWNER:
`
`David Mancino
`dmancino@bakerlaw.com
`
`William Smith
`wsmith@bakerlaw.com
`
`Kevin Flynn
`kflynn@bakerlaw.com
`
`
`
`
`
`
`3
`
`