`
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BROADSIGN INTERNATIONAL, LLC,
`Petitioner
`
`v.
`
`T-REX PROPERTY AB,
`Patent Owner.
`____________
`
`Case IPR2016-01869
`Patent RE39,470
`____________
`
`Mailed: October 7, 2016
`
`Before Steven M. Amitrani, 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 September 24, 2016.
`
`
`
`IPR2016-01869
`Patent RE39,470
`A review of the petition identified the following defect(s):
`The Certificate of Service (COS) is incomplete. The COS must
`indicate that a copy of the Petition and exhibits relied upon therein were
`served on the Patent Owner at the correspondence address of record, as well
`as the date served manner of service. The COS merely indicates a copy of
`the Petition has been served on Patent Owner. See 37 C.F.R. §§ 42.6 and
`42.105.
`Correction is required. 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.
`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.
`
`
`
`2
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`IPR2016-01869
`Patent RE39,470
`§ 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
`Patent Trial and Appeal Board End to End (PTAB E2E), accessible from the
`Board Web site at http://www.uspto.gov/PTAB. To file documents, users
`must register with PTAB E2E. Information regarding how to register with
`and use PTAB E2E is available at the Board Web site.
`If there are any questions pertaining to this notice, please contact
`Steven Amitrani at 571-270-5937 or the Patent Trial and Appeal Board at
`571-272-7822.
`
`PETITIONER:
`
`Vincent Rubino
`vrubino@brownrudnick.com
`Peter Lambrianakos
`plambrianakos@brownrudnick.com
`Enrique Iturralde
`eiturralde@brownrudnick.com
`
`
`
`PATENT OWNER:
`
`KEVIN M FARRELL
`PIERCE ATWOOD LLP
`ONE NEW HAMPSHIRE AVE #350
`PORTSMOUTH NH 04101
`
`
`
`3
`
`
`
`IPR2016-01869
`Patent RE39,470
`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
`
`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
`20036
`www.americanbar.org
`
`D.C.
`
`AMERICAN
`INTELLECTUAL
`PROPERTY LAW
`ASSOCIATION
`(AIPLA)
`Telephone:
`(703) 415-0780
`Fax: (703) 415-0786
`241 18th Street, South,
`Suite 700
`575 Lexington Ave
`New York, NY 10022 Arlington, VA 22202
`
`www.cpradr.org
`
`www.aipla.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
`
`
`
`4
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`
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`IPR2016-01869
`Patent RE39,470
`proceedings. To report an experience with ADR, please forward a summary
`of
`the
`particulars
`to
`the
`following
`address:
`PTAB_ADR_Comments@uspto.gov
`
`
`
`
`
`5