`571-272-7822
`
`
`Paper No. 5
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AKORN INC.,
`Petitioner,
`
`v.
`
`ALLERGAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00596
`Patent 8,629,111
`____________
`
`Mailed: 01/17/2017
`
`Before JAMILAH SULTAN, Trial Paralegal
`
`
`
`
`
`NOTICE OF FILING DATE ACCORDED TO PETITION
`AND
`TIME FOR FILING PATENT OWNER PRELIMINARY RESPONSE
`
`
`The petition for inter partes review, filed in the above proceeding has
`
`been accorded the filing date of 01/06/2017.
`
`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
`
`
`
`Case IPR2017-00596
`Patent No. 8,629,111
`
`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.
`
`If there are any questions pertaining to this notice, please contact
`
`Jamilah Sultan at 571-270-5927 or the Patent Trial and Appeal Board at
`
`571-272-7822.
`
`
`
`
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`Case IPR2017-00596
`Patent No. 8,629,111
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`
`
`PETITIONER:
`
`Michael Dzwonczyk
`Azadeh Kokabi
`Travis Ribar
`SUGHRUE MION, PLLC
`mdzwonczyk@sughrue.com
`akokabi@sughrue.com
`tribar@sughrue.com
`
`
`PATENT OWNER:
`
`ALLERGAN, INC.
`2525 Dupont Drive, T2-7H
`Irvine, CA 92612-1599
`
`Jonathan E. Singer
`FISH & RICHARDSON P.C.
`60 South Sixth Street, #3200
`Minneapolis, MN 55402
`
`
`
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`
`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
`
`AMERICAN
`INTELLECTUAL
`PROPERTY
`LAW
`ASSOCIATION
`(AIPLA)
`Telephone:
`(703) 415-0780
`Fax: (703) 415-0786
`241 18th Street, South,
`Suite 700
`Arlington, VA 22202
`
`www.cpradr.org
`
`www.aipla.org
`
`AMERICAN
`ARBITRATIO
`N
`ASSOCIATIO
`N (AAA)
`
`Telephone:
`(212) 484-3266
`Fax: (212) 307-4387
`140 West 51st
`Street
`New York, NY
`10020
`www.adr.org
`
`WORLD
`INTELLECTUA
`L PROPERTY
`ORGANIZATI
`ON (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,
`
`
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`Case IPR2017-00596
`Patent No. 8,629,111
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`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
`
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