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2017 Pat. App. LEXIS 12925

Patent Trial and Appeal Board

September 5, 2017, Decided

Cases IPR2017-00998 and IPR2017-01002, Paper 13Patent 7,412,486 B1 1 

USPTO Bd of Patent Appeals & Interferences; Patent Trial & Appeal Bd Decs.


ARPIN, Administrative Patent Judge.


Denying Institution of Inter Partes Review 37 C.F.R. § 42.108


A. Background

In Case IPR2017-00998, Facebook, Inc. ("Petitioner") filed a Petition requesting that we institute inter partes  review of claim 19 of U.S. Patent No. 7,412,486 B1 (IPR2017-00998, Ex. 1001, "the '486 patent"). 2 Paper 2 ("998 Pet."). Sound View Innovations, LLC ("Patent Owner") filed a Preliminary Response. IPR2017-00998, Paper 6 ("998 Prelim. Resp."). In Case IPR2017-01002,  [*2]  Petitioner filed a second Petition requesting that we institute inter partes  review of claim 19 of the '486 patent. IPR2017-01002, Paper 2 ("1002 Pet."). Patent Owner also filed a Preliminary Response in this case. IPR2017-01002, Paper 6 ("1002 Prelim. Resp.").

Our Rules for America Invents Act ("AIA") proceedings "shall be construed to secure the just, speedy, and inexpensive resolution of every proceeding." 37 C.F.R. § 42.1(b); Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48758 (August 14, 2012). Case IPR2017-00998 and Case IPR2017-01002 involve a challenge to the same claim of the same patent by the same Petitioner, and there is overlap in the asserted prior art and additional evidence submitted by Petitioner.  [*3]  We conclude that, in the interest of the just, speedy, and inexpensive resolution of these cases, it is appropriate to consolidate these cases and to issue one decision on institution addressing both Case IPR2017-01002 and Case IPR2017-00998. See 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.").

Having considered the Petitions, the Preliminary Responses, and the evidence of record, we deny Petitioner's requests to institute inter partes  reviews of claim 19 of the '486 patent, and this decision denying institution of inter partes  review is entered concurrently in each case.

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2017 Pat. App. LEXIS 12925 *




ROUTINE OPINION. Pursuant to the Patent Trial and Appeal Board Standard Operating Procedure 2, the opinion below has been designated a routine opinion.


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