`Trials@uspto.gov
`
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC. and MYLAN LABORATORIES
`LIMITED,
`Petitioner,
`
`v.
`
`UCB PHARMA GMBH,
`Patent Owner.
`____________
`
`Case IPR2016-00510
`Patent 6,858,650 B1
`____________
`
`Mailed: February 2, 2016.
`
`Before PAUL SULLIVAN, Trial Paralegal
`
`NOTICE OF FILING DATE ACCORDED TO PETITION
`AND
`TIME FOR FILING PATENT OWNER PRELIMINARY RESPONSE
`
`The petition for inter partes review in the above proceeding has been
`accorded the filing date of January 28, 2016.
`A review of the petition identified the following defect(s):
`The Petition contains arguments in the claim charts on the following
`pages: p. 31 (“A person of ordinary skill would have been motivated to look
`at improving 5-HMT administration in view of tolterodine.”); p. 33 (“A
`
`
`
`IPR2016-00510
`Patent 6,858,650 B1
`
`person of ordinary skill would have been led to prodrug optimization and
`fumarate salt forms.”); p. 35 (“Acid additional salts were known.”); and pp.
`40, 51 (“5-HMT and its prodrug, tolderodine, were known to be associated
`with the treatment of urinary incontinence.”). Placing arguments in a claim
`chart, which may be single-spaced, circumvents the page limit requirement,
`which requires double-spacing. 37 C.F.R. § 42.6(a)(2)(iii). This defect can
`be remedied by removing the above-identified arguments and uploading
`the corrected Petition in PRPS.
`The attached Certificate of Service declares that a “Power of
`Attorney” was served on the Patent Owner, not the attached Petition
`and accompanying exhibits as required by 37 C.F.R. § 42.6(e), 42.105.
`This defect can be remedied by attaching a corrected Certificate of
`Service to the corrected Petition.
`Petitioner must correct the defect(s) within FIVE BUSINESS DAYS
`from this notice. Failure to correct the defect(s) may result in an order to
`show cause as to why the Board should institute the trial. No substantive
`changes (e.g., new grounds) may be made to the petition.
`Patent Owner may file a preliminary response to the petition no later
`than three months from the date of this notice. The preliminary response is
`limited to setting forth the reasons why the requested review should not be
`instituted. Patent Owner may also file an election to waive the preliminary
`response to expedite the proceeding. For more information, please consult
`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012),
`which is available on the Board Web site at http://www.uspto.gov/PTAB.
`
`
`
`2
`
`
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`IPR2016-00510
`Patent 6,858,650 B1
`
`
`Patent Owner is advised of the requirement to submit mandatory
`notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of
`the petition.
`The parties are encouraged to use the heading on the first page of this
`Notice for all future filings in the proceeding.
`The parties are advised that under 37 C.F.R. § 42.10(c), recognition of
`counsel pro hac vice requires a showing of good cause. The parties are
`authorized to file motions for pro hac vice admission under 37 C.F.R.
`§ 42.10(c). Such motions shall be filed in accordance with the “Order --
`Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639,
`Paper 7, a copy of which is available on the Board Web site under
`“Representative Orders, Decisions, and Notices.”
`The parties are reminded that unless otherwise permitted by 37 C.F.R.
`§ 42.6(b)(2), all filings in this proceeding must be made electronically in the
`Patent Review Processing System (PRPS), accessible from the Board Web
`site at http://www.uspto.gov/PTAB.
`If there are any questions pertaining to this notice, please contact Paul
`Sullivan at 571-272-0338 or the Patent Trial and Appeal Board at 571-272-
`7822.
`
`
`PETITIONER:
`
`Mitchell G. Stockwell
`D. Clay Holloway
`Alyson L. Wooten
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street, NE
`Suite 2800
`
`
`
`3
`
`
`
`IPR2016-00510
`Patent 6,858,650 B1
`
`Atlanta, GA 30309
`
`mstockwell@kilpatricktownsend.com
`cholloway@kilpatricktownsend.com
`awooten@kilpatricktownsend.com
`
`PATENT OWNER:
`
`Kenyon & Kenyon LLP
`One Broadway
`New York, NY 10004
`
`
`
`
`4
`
`
`
`NOTICE CONCERNING ALTERNATIVE DISPUTE RESOLUTION (ADR)
`
`The Patent Trial and Appeal Board (PTAB) strongly encourages parties who are considering
`
`settlement to consider alternative dispute resolution as a means of settling the issues that may be raised
`in an AIA trial proceeding. Many AIA trials are settled prior to a Final Written Decision. Those
`considering settlement may wish to consider alternative dispute resolution techniques early in a
`proceeding to produce a quicker, mutually agreeable resolution of a dispute or to at least narrow the
`scope of matters in dispute. Alternative dispute resolution has the potential to save parties time and
`money.
`
`Many non-profit organizations, both inside and outside the intellectual property field, offer
`
`alternative dispute resolution services. Listed below are the names and addresses of several such
`organizations. The listings are provided for the convenience of parties involved in cases before the
`PTAB; the PTAB does not sponsor or endorse any particular organization’s alternative dispute resolution
`services. In addition, consideration may be given to utilizing independent alternative dispute resolution
`firms. Such firms may be located through a standard keyword Internet search.
`
`
`
`
`
`CPR INSTITUTE
`FOR DISPUTE
`RESOLUTION
`
`Telephone:
`(212) 949-6490
`Fax: (212) 949-8859
`
`575 Lexington Ave
`New York, NY 10022
`
`www.cpradr.org
`
`
`AMERICAN
`INTELLECTUAL
`PROPERTY LAW
`ASSOCIATION
`(AIPLA)
`Telephone:
`(703) 415-0780
`Fax: (703) 415-0786
`241 18th Street, South,
`Suite 700
`Arlington, VA 22202
`
`www.aipla.org
`
`AMERICAN
`ARBITRATION
`ASSOCIATION
`(AAA)
`
`Telephone:
`(212) 484-3266
`Fax: (212) 307-4387
`140 West 51st
`Street
`New York, NY
`10020
`www.adr.org
`
`WORLD
`INTELLECTUAL
`PROPERTY
`ORGANIZATION
`(WIPO)
`Telephone:
`41 22 338 9111
`Fax: 41 22 733 5428
`34, chemin des
`Colombettes
`CH-1211 Geneva 20,
`Switzerland
`www.wipo.int
`
`AMERICAN BAR
`ASSOCIATION
`(ABA)
`
`Telephone :
`(202) 662-1000
`N/A
`1050 Connecticut Ave,
`NW
`Washington D.C. 20036
`
`www.americanbar.org
`
`If parties to an AIA trial proceeding consider using alternative dispute resolution, the PTAB
`
`would like to know whether the parties ultimately decided to engage in alternative dispute resolution
`and the reasons why or why not. If the parties actually engage in alternative dispute resolution, the
`PTAB would be interested to learn what mechanism (e.g., arbitration, mediation, etc.) was used and the
`general result. Such a statement from the parties is not required but would be helpful to the PTAB in
`assessing the value of alternative dispute resolution to parties involved in AIA trial proceedings. To
`report an experience with ADR, please forward a summary of the particulars to the following email
`address: PTAB_ADR_Comments@uspto.gov
`
`
`
`