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Inter Partes Review 2014-00361
`U.S. Patent No. 8,309,122
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`Paper No. ______
`February 18, 2014
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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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`AMNEAL PHARMACEUTICALS, LLC,
`Petitioner,
`
`v.
`
`Patent of ENDO PHARMACEUTICALS INC.,
`Patent Owner
`__________
`
`Case 2014-00361
`U.S. Patent No. 8,309,122
`__________
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Dated: February 18, 2014
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`PATENT OWNER’S NOTICE UNDER 37 C.F.R. § 42.8 AND
`DESIGNATION UNDER 37 C.F.R. § 42.10
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`Filed by:
`
`Joseph A. Mahoney (Lead Counsel)
`Registration No. 38,956
`MAYER BROWN LLP
`71 South Wacker Drive
`Chicago, IL 60606
`Telephone: (312) 701-8979
`Facsimile: (312) 706-8530
`
`

`

`
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`Email: jmahoney@mayerbrown.com
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`Erick J. Palmer (Back-Up Counsel)
`Registration No. 64,456
`MAYER BROWN LLP
`71 South Wacker Drive
`Chicago, IL 60606
`Telephone: (312) 701-8352
`Facsimile: (312) 706-9316
`Email: ejpalmer@mayerbrown.com
`
`Counsel for Patent Owner, Endo
`Pharmaceuticals Inc.
`
`
`
`ii
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`

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`
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`Patent Owner Endo Pharmaceuticals Inc. hereby submits its mandatory
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`notices under 37 C.F.R. § 42.8 and designation of counsel under 37 C.F.R. § 42.10.
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`I.
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`REAL PARTY-IN-INTEREST
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`The real party-in-interest is Endo Pharmaceuticals Inc., the owner of U.S.
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`Patent No. 8,309,122.
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`II. RELATED MATTERS
`This request for inter partes review is one of two petitions filed on January
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`16, 2014 by Petitioner Amneal Pharmaceuticals, LLC against patents owned by
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`Endo Pharmaceuticals Inc. The other related request for inter partes review relates
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`to U.S. Patent No. 8,329,216 and has been designated IPR2014-00360. Patent
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`Owner Endo Pharmaceuticals Inc. has asserted each of these challenged patents
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`against Petitioner in Endo Pharms. Inc. & Grunenthal GmbH v. Amneal Pharms.,
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`LLC & Amneal Pharms. of New York, Civil Action No. 12-civ-8115 (S.D.N.Y.).
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`Petitioner also filed currently pending IPR2013-00160 on November 18,
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`2013, challenging U.S. Patent No. 7,851,482, which is owned by Patent Owner
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`Endo Pharmaceuticals Inc.
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`III. DESIGNATION OF COUNSEL AND POWER OF ATTORNEY
`By this Notice, Patent Owner Endo Pharmaceuticals Inc. hereby designates
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`and authorizes the following Lead and Back-Up Counsel to transact all business on
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`its behalf in this proceeding:
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`1
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`

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`Joseph A. Mahoney (Lead Counsel)
`Reg. No. 38,956
`MAYER BROWN LLP
`71 South Wacker Drive
`Chicago, IL 60606
`Telephone: (312) 701-8979
`Facsimile: (312) 706-8530
`jmahoney@mayerbrown.com
`
`Erick J. Palmer (Back-Up)
`Reg. No. 64,456
`Mayer Brown LLP
`71 South Wacker Drive
`Chicago, IL 60606
`Telephone: (312) 701-8352
`Facsimile: (312) 706-9316
`ejpalmer@mayerbrown.com
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`A Power of Attorney for practitioners associated with Customer Number 26565,
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`including Lead and Back-Up Counsel identified above, is already of record in this
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`patent. Patent Owner therefore respectfully submits that, in accordance with 37
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`C.F.R. § 42.10(b), a Power of Attorney is not required to accompany this Notice.
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`IV. SERVICE INFORMATION
`Patent Owner Endo Pharmaceuticals Inc. consents to service by electronic
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`mail to jmahoney@mayerbrown.com and ejpalmer@mayerbrown.com.
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`2
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`Dated: February 18, 2014
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`/Joseph A. Mahoney/
`Joseph A. Mahoney (Lead Counsel)
`Registration No. 38,956
`Mayer Brown LLP
`71 South Wacker Drive
`Chicago, IL 60606
`Telephone: (312) 701-8979
`Facsimile: (312) 706-8530
`Email: jmahoney@mayerbrown.com
`
`Erick J. Palmer (Back-Up Counsel)
`Registration No. 64,456
`Mayer Brown LLP
`71 South Wacker Drive
`Chicago, IL 60606
`Telephone: (312) 701-8352
`Facsimile: (312) 706-9316
`Email: ejpalmer@mayerbrown.com
`
`Counsel for Patent Owner, Endo
`Pharmaceuticals Inc.
`
`3
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`

`

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`CERTIFICATE OF SERVICE
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`I, the undersigned, hereby certify that on this 18th day of February, 2014, I
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`caused the foregoing document, PATENT OWNER’S NOTICE UNDER 37 C.F.R.
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`§ 42.8 AND DESIGNATION UNDER 37 C.F.R. § 42.10, to be served via
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`electronic mail on the following attorneys for Petitioner:
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`Eldora L. Ellison (Reg. No. 39,967)
`eelison-PTAB@skgf.com
`Dennies Varughese (Reg. No. 61,868)
`dvarughe-PTAB@skgf.com
`Sterne, Kessler, Goldstein & Fox PLLC
`1100 New York Avenue, NW
`Washington, DC 20005
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`
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`Dated: February 18, 2014
`
`
`/Joseph A. Mahoney/
`Joseph A. Mahoney
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`
`
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`708559145
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`

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