`571-272-7822
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`Paper No. 3
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`J. Kyle BASS and Erich SPANGENBERG,
`Petitioners,
`
`v.
`
`ALPEX PHARMA SA,
`Patent Owner.
`_______________
`
`Case IPR2016-00245
`Patent 8,440,170 B2
`_______________
`
`Mailed: December 4, 2015
`
`
`
`Before DAVID SCHMERFELD, 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 November 24, 2015.
`
`A review of the petition identified the following defects:
`Improper usage of claim charts. The petition’s claim charts
`
`(i)
`improperly contain argument. On page 21 of the petition, the claim chart
`states: “[T]he ‘blue colored mannitol inclusions’ were commercially
`
`
`
`Case IPR2016-00245
`Patent 8,440,172 B2
`
`available at the time of the invention and known to be useful as claimed.
`(Ex. 1002, ¶ 16).” Exhibit 1002 is a declaration. See VMware, Inc. v. Elecs.
`& Telecomms. Research Inst., Case IPR2014-00901, slip op. at 2 (PTAB
`July 14, 2014) (Paper 7) (declarant’s conclusion stated in a claim chart
`constitutes improper argument).
`(ii) Defective exhibits. All of the exhibits do not contain page
`
`numbering, see 37 C.F.R. § 42.63(d)(2)(i) (each page of paper exhibit must
`be uniquely numbered in sequence), and the first page of Exhibit 1016 is not
`labeled, see 37 C.F.R. § 42.63(d)(2)(ii) (exhibit label must be affixed to
`lower right corner of first page of exhibit).
`Petitioners must correct the defects within FIVE BUSINESS DAYS
`
`from this notice. Failure to correct the defects 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. 48,756 (Aug. 14, 2012),
`which is available on the Board Web site at http://www.uspto.gov/PTAB.
`
`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.
`
`
`
`Case IPR2016-00245
`Patent 8,440,172 B2
`
`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. To file documents, users must first
`obtain a user ID and password by registering with PRPS. Information
`regarding how to register with and use PRPS is available at the Board Web
`site.
`If there are any questions pertaining to this notice, please contact
`
`David Schmerfeld at 571-272-7184 or the Patent Trial and Appeal Board at
`571-272-7822.
`
`PETITIONERS:
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`
`
`
`
`PATENT OWNER:
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`607 14th Street, N.W.
`Suite 800
`Washington, DC 20005