`Filed: January 14, 2015
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`ROXANE LABORATORIES, INC. AND
`PAR PHARMACEUTICAL, INC.
`Petitioners,
`
`v.
`
`JAZZ PHARMACEUTICALS, INC.
`Patent Owner
`
`________________
`
`Case CBM2014-00175
`Patent 7,765,107
`________________
`
`UPDATED MANDATORY NOTICES BY
`JAZZ PHARMACEUTICALS, INC. UNDER 37 C.F.R. § 42.8(a)(3)
`
`
`
`
`
`
`
`Case CBM2014-00175
`Patent 7,765,107
`Patent Owner Updated Mandatory Notices
`
`
`Pursuant to 37 C.F.R. §§ 42.8(a)(3) and 42.8(b)(2), Patent Owner submits
`
`updated mandatory notices regarding related matters.
`
`In its September 8, 2014 Mandatory Notices (Paper 7), Patent Owner
`
`identified CBM2014-00149, CBM2014-00150, CBM2014-00151, and CBM2014-
`
`00153 as related administrative proceedings. On January 13, 2015, the Patent Trial
`
`and Appeal Board (the “Board”) issued a single Decision Denying Institution of
`
`Covered Business Method Review in each of the above-enumerated proceedings.
`
`See CBM2014-00149, Paper 12. Specifically, the Board found that each patent
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`involved in those proceedings was not a “covered business method patent” because
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`it did not “claim[] a method or corresponding apparatus for performing data
`
`processing or other operations used in the practice administration or management
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`of a financial product or service.” Id. at 8-10 (emphasis in original). Because the
`
`patent in this proceeding (U.S. Patent No. 7,765,107) is related to the patents in the
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`above-indentified CBMs, and those “matter[s] would affect…a decision in th[is]
`
`proceeding” (37 C.F.R. § 42.8(b)(2)), Patent Owner respectfully brings it to the
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`Board’s attention.
`
`Date: January 14, 2015
`
`
`
`
`Respectfully submitted,
`
`By: /F. Dominic Cerrito (Reg. No. 38,100)/
` F. Dominic Cerrito
` Reg. No. 38,100
`
`
`
`Case CBM2014-00175
`Patent 7,765,107
`Patent Owner Updated Mandatory Notices
`
`
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`General Tel: (212) 849-7000
`Direct Tel: (212) 849-7450
`Fax: (212) 849-7100
`nickcerrito@quinnemanuel.com
`
`John V. Biernacki
`Reg. No. 40,511
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, Ohio 44114
`General Tel: (216) 586-3939
`Direct Tel: (216) 586-7747
`Fax: (216) 579-0212
`jvbiernacki@jonesday.com
`
`Attorneys for Jazz Pharmaceuticals, Inc.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`ROXANE LABORATORIES, INC. AND
`PAR PHARMACEUTICAL, INC.
`Petitioners,
`
`v.
`
`JAZZ PHARMACEUTICALS, INC.
`Patent Owner
`
`________________
`
`Case CBM2014-00175
`Patent 7,765,107
`________________
`
`CERTIFICATE OF SERVICE
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certify that
`
`UPDATED MANDATORY NOTICES BY JAZZ PHARMACEUTICALS,
`
`INC. UNDER 37 C.F.R. § 42.8(a)(3) were served on January 14, 2015 by filing
`
`this document through the Patent Review Processing System, as well as e-mailing
`
`a copy to aclement@lockelord.com and pfill@lockelord.com.
`
` Respectfully submitted,
`
`By: /F. Dominic Cerrito (Reg. No. 38,100)/
` F. Dominic Cerrito
` Reg. No. 38,100
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`General Tel: (212) 849-7000
`Direct Tel: (212) 849-7450
`Fax: (212) 849-7100
`nickcerrito@quinnemanuel.com
`
`John V. Biernacki
`Reg. No. 40,511
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, Ohio 44114
`General Tel: (216) 586-3939
`Direct Tel: (216) 586-7747
`Fax: (216) 579-0212
`jvbiernacki@jonesday.com
`Attorneys for Jazz Pharmaceuticals, Inc.
`
`Date: January 14, 2015
`
`
`
`
`
`
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