`571-272-7822
`
`
`
`
`Paper No. 20
`
`Entered: May 23, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS, INC.,
`Petitioner,
`
`v.
`
`MONKEYMEDIA, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00059
`Patent 9,247,226 B2
`____________
`
`
`
`Before MARC S. HOFF, LYNNE E. PETTIGREW, and
`KAMRAN JIVANI, Administrative Patent Judges.
`
`HOFF, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`The Institution Decision in this proceeding instituted a trial on claims
`1 and 7 of U.S. Patent No. 9,247,226 B2 (Ex. 1001, “the ’226 patent”), but
`not on claims 2–6 and 8–12. Paper 15, 2, 36. Subsequently, on April 24,
`
`
`
`IPR2018-00059
`Patent 9,247,226 B2
`
`2018, the Supreme Court held that a decision to institute under 35 U.S.C. §
`314 may not institute on less than all claims challenged in the petition. SAS
`Inst., Inc. v. Iancu, 138 S. Ct. 1348, 1352–53 (2018).
`On May 18, 2018, we convened a teleconference at the parties’
`request. Counsel for Petitioner, counsel for Patent Owner, and Judges Hoff
`and Pettigrew attended. During the call, the parties requested authorization
`to file a joint motion to withdraw the non-instituted grounds and claims.
`Patent Owner requested authorization to file a motion for adverse judgment
`as to claims 1 and 7, which presently stand disclaimed by Patent Owner. See
`Paper 18; Ex. 2010. We authorize the parties to file, by June 7, 2018, 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). We further authorize Patent Owner to file, by June 7, 2018, a
`Motion for Adverse Judgment as to claims 1 and 7.
`ORDER
`In consideration of the foregoing, it is, therefore,
`ORDERED that the parties are authorized to file, by June 7, 2018, a
`Joint Motion to Limit the Petition by removing all claims and grounds that
`were not instituted in our Decision on Institution.
`ORDERED that Patent Owner is authorized to file, by June 7, 2018, a
`Motion for Adverse Judgment as to claims 1 and 7 of the ’226 Patent.
`
`
`
`2
`
`
`
`IPR2018-00059
`Patent 9,247,226 B2
`
`PETITIONER:
`
`Stuart A. Nelson
`W. Karl Renner
`Ryan Chowdhury
`FISH & RICHARDSON P.C.
`snelson@fr.com
`axf-ptab@fr.com
`rchowdhury@fr.com
`
`Ashraf Fawzy
`Jonathan Stroud
`UNIFIED PATENTS, INC.
`afawzy@unifiedpatents.com
`jonathan@unifiedpatents.com
`
`
`
`PATENT OWNER:
`
`Jonathan D. Baker
`FARNEY DANIELS PC
`jbaker@farneydaniels.com
`
`
`3
`
`
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