`571-272-7822
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` Paper 5
`Entered: June 20, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ACCORD HEALTHCARE, INC., USA
`Petitioner
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`v.
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`ELI LILLY & COMPANY
`Patent Owner
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`Case IPR2013-00356
`Patent 7,772,209
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`Before Andrew Kellogg, Trial Paralegal
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`NOTICE OF FILING DATE ACCORDED TO PETITION
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`TIME FOR FILING PATENT OWNER PRELIMINARY RESPONSE
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`The petition for inter partes review in the above proceeding has been
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`accorded the filing date of June 14, 2013.
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`Administrative Patent Judge Scott E. Kamholz has been designated to
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`manage the proceeding. 37 C.F.R. § 42.5.
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`A review of the petition identified the following defect(s):
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`Improper usages of claim charts: Although claim charts are permitted, the
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`purpose of claim charts is to assist petitioners to specify where each claim
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`limitation is found in the prior art references relied upon. Claim charts should be
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`Case IPR2013-00356
`Patent 7,772,209
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`presented in a readable manner and be free from attorney argument. Presenting
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`claim limitations and prior art teachings in a confusing format without appropriate
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`spacing between claims creates inefficiency and circumvents the 60-page limit set
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`forth in 37 C.F.R. § 42.24.
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`Claim Construction: Petitions must identify “[h]ow the challenged claim is
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`to be construed.” 37 C.F.R. § 42.104(b)(3). In most cases, claim construction is an
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`important step in the determination of whether the challenged claims are
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`unpatentable over the cited prior art. In the instant petition no individual claim
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`terms are given specific construction.
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`Exhibit Page Numbers: When exhibits are papers, each page must be
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`numbered in sequence. 37 C.F.R. § 42.63(d)(2)(i).
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`Petitioner must correct the defect(s) within FIVE BUSINESS DAYS from
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`this notice. Failure to correct the defect(s) may result in an order to show cause as
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`to why the Board should institute the trial. No substantive changes (e.g., new
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`grounds) may be made to the petition.
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`Patent Owner may file a preliminary response to the petition no later than
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`three months from the date of this notice. The preliminary response is limited to
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`setting forth the reasons why the requested review should not be instituted. Patent
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`Owner may also file an election to waive the preliminary response to expedite the
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`proceeding. For more information, please consult the Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web
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`site at http://www.uspto.gov/PTAB.
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`Patent Owner is advised of the requirement to submit mandatory notice
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`information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
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`The parties are encouraged to use the heading on the first page of this Notice
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`for all future filings in the proceeding.
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`Case IPR2013-00356
`Patent 7,772,209
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`The parties are advised that under 37 C.F.R. § 42.10(c), recognition of
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`counsel pro hac vice requires a showing of good cause. The parties are authorized
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`to file motions for pro hac vice admission under 37 C.F.R. § 42.10(c). Such
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`motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro
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`Hac Vice Admission” in Case IPR2013-00010 (MPT), a copy of which is available
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`on the Board Web site under “Representative Orders, Decisions, and Notices.”
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`Any motion for pro hac vice admission filed by the parties shall also indicate that
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`the person sought to be admitted will be subject to the USPTO Rules of
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`Professional Conduct. See Changes to Representation of Others Before the United
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`States Patent and Trademark Office; Final Rule, 78 Fed. Reg. 20180 (Apr. 3, 2013)
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`(effective May 3, 2013).
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`The parties are reminded that unless otherwise permitted by 37 C.F.R.
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`§ 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent
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`Review Processing System (PRPS), accessible from the Board Web site at
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`http://www.uspto.gov/PTAB.
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`If there are any questions pertaining to this notice, please contact Andrew
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`Kellogg at 571-272-5366 or the Patent Trial and Appeal Board at 571-272-7822.
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`Case IPR2013-00356
`Patent 7,772,209
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`PETITIONER:
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`Chidambaram S. Iyer
`Chandran B. Iyer
`SUGHRUE MION, PLLC
`AccordIPR@Sughrue.com
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`PATENT OWNER:
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`Elizabeth A. McGraw
`Eli Lilly and Company
`Patent Division
`P.O. Box 6288
`Indianapolis, Indiana 46206-6288
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