`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`JANSSEN ONCOLOGY, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01332
`Patent 8,822,438 B2
`____________
`
`Mailed: July 12, 2016
`
`
`
`Before PATRICK E. BAKER, 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 June 30, 2016.
`
`
`
`IPR2016-01332
`Patent 8,822,438 B2
`
`
`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.
`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. 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.
`
`
`
`2
`
`
`
`IPR2016-01332
`Patent 8,822,438 B2
`
`
`If there are any questions pertaining to this notice, please contact
`Patrick E. Baker at 703-756-4781 or the Patent Trial and Appeal Board at
`571-272-7822
`
`
`
`PETITIONER:
`
`Brandon M. White
`Crystal Canterbury
`PERKINS COIE LLP
`bmwhite@perkinscoie.com
`CCanterbury@perkinscoie.com
`
`PATENT OWNER:
`
`Janssen Oncology, Inc.
`10990 Wilshire Blvd., Suite 1200
`Los Angeles, CA 90024
`
`Johnson & Johnson,
`Attn: Joseph F. Shirtz
`One Johnson & Johnson Plaza
`New Brunswick, NJ 08933-7003
`
`
`
`
`3
`
`
`
`IPR2016-01332
`Patent 8,822,438 B2
`
`
`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
`
`
`
`
`
`4