Case IPR2014-00115
`Patent 7,879,828
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APOTEX, INC.
`Petitioner
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`v.
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`WYETH LLC
`Patent Owner
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`Case IPR2014-00115
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`Patent 7,879,828
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`SUBMISSION OF MANDATORY NOTICE INFORMATION
`PURSUANT TO 37 C.F.R. § 42.8(a)(2)
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`Pursuant to 37 C.F.R. § 48.2(a)(2), Patent Owner Wyeth LLC submits the
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`following mandatory notice information.
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`Patent 7,879,828
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APOTEX, INC.
`Petitioner
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`v.
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`WYETH LLC
`Patent Owner
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`Case IPR2014-00115
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`Patent 7,879,828
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`SUBMISSION OF MANDATORY NOTICE INFORMATION
`PURSUANT TO 37 C.F.R. § 42.8(a)(2)
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`Pursuant to 37 C.F.R. § 48.2(a)(2), Patent Owner Wyeth LLC submits the
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`following mandatory notice information.
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`Case IPR2014-00115
`Patent 7,879,828
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`REAL PARTY-IN-INTEREST
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`Wyeth LLC, a Delaware limited liability company having a place of
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`business at 5 Giralda Farms, Madison, New Jersey 07940, is the owner of the
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`entire interest in U.S. Patent No. 7,879,828 (“the ’828 patent”). PF PRISM, C.V.,
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`a limited partnership (commanditaire vennootschap) organized and existing under
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`the laws of the Netherlands and having offices at Blaak 40 basement, 3011 TA,
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`Rotterdam, Netherlands, took an exclusive license in the ’828 patent. Thereafter,
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`PF PRISM C.V. contributed its rights under the exclusive license to Pfizer
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`Pharmaceuticals LLC, a Delaware limited liability company having a place of
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`business at Bo. Carmelitas, Road 689, Km 1.9, Vega Baja, Puerto Rico 00693.
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`Wyeth LLC, PF PRISM C.V., and Pfizer Pharmaceuticals LLC are wholly-owned,
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`directly or indirectly, by Pfizer Inc., a publicly-traded company.
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`Case IPR2014-00115
`Patent 7,879,828
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`RELATED MATTERS
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`The following judicial and administrative matters could affect, or be affected
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`by, a decision in this proceeding:
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`• The ’828 patent has been asserted in the following litigation, which is
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`currently pending: Pfizer Inc., et al. v. Fresenius Kabi USA, LLC, No.
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`1:13-cv-01893-SLR (D. Del.).
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`• There is also litigation pending in the United States District Court for
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`the District of Delaware between the Petitioner and the Patent Owner
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`arising from Petitioner’s submission of an Abbreviated New Drug
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`Application to market a generic version of Pfizer’s drug Tygacil ®.
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`Pfizer Inc., et al. v. Apotex Inc. and Apotex Corp., 1:13-cv-01613-
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`SLR (D. Del.). The ’828 patent is not asserted in that case because
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`Apotex did not assert pursuant to 21 U.S.C. § 355(b)(2)(A)(iv) that
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`the ’828 patent was invalid or would not be infringed by the
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`manufacture, use, or sale of the drug covered by Apotex’s
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`Abbreviated New Drug Application.
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`• Patent Application Number 13/011,164, which was filed on January
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`21, 2011, is pending and claims the benefit of Application Number
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`Case IPR2014-00115
`Patent 7,879,828
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`11/374,330, which is an application in the chain leading to issuance of
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`the ’828 patent.
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`Case IPR2014-00115
`Patent 7,879,828
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`LEAD AND BACK-UP COUNSEL
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`Patent Owner Wyeth LLC designates the following lead and back-up
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`Back-Up Counsel
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`David Kiernan
`Reg. No. 43,714
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`202-434-5191 (Telephone)
`202-434-5029 (Facsimile)
`dkiernan@wc.com
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`counsel:
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`Lead Counsel
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`Stanley E. Fisher
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`Reg. No. 55,820
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`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
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`202-434-5289 (Telephone)
`202-434-5029 (Facsimile)
`sfisher@wc.com
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`Case IPR2014-00115
`Patent 7,879,828
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`SERVICE INFORMATION
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`(i)
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`Electronic mail addresses:
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`(ii) Postal mailing address:
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`(iii) Hand-delivery address:
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`(iv) Telephone Number:
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`Facsimile number:
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`(v)
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`sfisher@wc.com
`dkiernan@wc.com
`jonathanwilliams@wc.com
`mkidd@wc.com
`jeff.rennecker@pfizer.com
`robyn.popeck@pfizer.com
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`Stanley E. Fisher
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
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`Same as above
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`202-434-5289
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`202-434-5029
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`Case IPR2014-00115
`Patent 7,879,828
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`CONCLUSION
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`Patent Owner Wyeth LLC believes that this submission fulfills the
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`requirements of 37 C.F.R. § 42.8(a)(2). Please contact the undersigned counsel if
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`any additional information is required.
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`Respectfully submitted,
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`/Stanley E. Fisher/
`Stanley E. Fisher
`Lead Attorney for Wyeth LLC
`Reg. No. 55,820
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
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`Phone: 202-434-5289
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`Dated: November 22, 2013
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`Case IPR2014-00115
`Patent 7,879,828
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the above-captioned Submission of
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`Mandatory Notice Information Pursuant to 37 C.F.R. § 42.8(a)(2) was served on
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`November 22, 2013, by filing this document through the Patent Review Processing
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`System as well as delivering a copy via electronic mail upon the following
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`attorneys of record for the Petitioner:
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`Kenneth J. Burchfiel
`kburchfiel@sughrue.com
`Travis B. Ribar
`tribar@sughrue.com
`Sughrue Mion, PLLC
`2100 Pennsylvania Ave., N.W.
`Washington, DC 20037
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`Dated: November 22, 2013
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`Respectfully submitted,
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`/Stanley E. Fisher/
`Stanley E. Fisher
`Lead Attorney for Wyeth LLC
`Reg. No. 55,820
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
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`Phone: 202-434-5289
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`8
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