`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`PURDUE PHARMA
`Petitioner
`
`V.
`
`DEPOMED, INC.
`
`Patent Owner
`
`Case IPR2014—O03 77
`
`Patent NO. 6,635,280
`
`Before Cathy Underwood, Trial Paralegal
`
`PATENT OWNER SUBMISSION OF MANDATORY NOTICE
`
`UNDER 37 C.F.R. § 42.8(a)(2)
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a)(2), Patent Owner, Depomed, Inc. submits
`
`herewith the following required mandatory notice information.
`
`I.
`
`Real Party In Interest Pursuant To 37 C.F.R. § 42.8(b)(1)
`
`Depomed, Inc., a corporation organized under the laws of California, having
`
`its principal place of business at 7999 Gateway Boulevard, Suite 300 in Newark,
`
`California, 94560, is the owner of all right, title and interest in U.S. Patent
`
`6,635,280 (“the ‘280 Patent”) by virtue of an Assignment from the inventors, John
`
`W. Shell, Jenny Louie-Helm, and Micheline Markey. The Assignment was
`
`recorded on March 29, 1999 at Reel 009873, Frame 0228.
`
`II.
`
`Related Matters Pursuant To 37 C.F.R. § 42.8(b)(2)
`
`The following judicial and/or administrative proceedings could affect, or be
`
`affected by, a decision in this proceeding:
`
`The ‘280 Patent is the subject of the following pending or concluded
`
`litigations:
`
`0 Depomed, Inc. v. Actavis Elizabeth LLC et al., 3:l2-cV-0l358—JAP-
`
`TJB (D.N.J.), filed March 2, 2012.
`
`0 Depomed, Inc. v. Zydus Pharm. (USA), Inc. et al., 3:l2—cV-028l3-
`
`JAP-TJB (D.N.J.), filed May 9, 2012.
`
`0 Depomed, Inc. v. Purdue Pharma L.P. et al., 3:13-00571 MAS-TIB
`
`(D.N.J.), filed January 29, 2013.
`
`4973 1398
`
`2
`
`
`
`0 Depomed, Inc. v. Endo Pharmaceuticals Inc., 3:l3—cV-02467—JAP—
`
`TJB (D.N.J.), filed April 17, 2013.
`
`The ‘280 Patent was the subject of the following concluded litigations:
`
`0 Depomed, Inc. v. Sun Pharma Global FZE et al., 3:11-cv-03553
`
`(D.N.J.), filed April 17, 2013.
`
`0 Depomed, Inc. v. Impax Laboratories, Inc. et al., 3:12—cv-02154
`
`(D.N.J.), filed April 10, 2012.
`
`0 Depomed, Inc. v. Lupin Pharmaceuticals, Inc. et al., 4:09-CV-05587
`
`(N.D.Ca.), filed November 25, 2009.
`
`0 Depomea’, Inc. v. Ivax Corporation, et al., 3:06-CV-00100 (N.D.Ca.),
`
`filed January 9, 2006.
`
`The ‘280 Patent claims priority to the application that issued as U.S. Patent
`
`6,340,475 (“the ‘475 Patent”). The ‘475 Patent is the subject of the following
`
`pending Inter Partes Review proceedings:
`
`o
`
`IPR20l4—00378.
`
`o
`
`IPR20l4-00379.
`
`III. Lead and Back-Up Counsel Pursuant To 37 C.F.R. § 42.8(b)(3)
`
`Patent Owner hereby designates Judy M. Mohr (Registration No. 38,563) as
`
`its lead counsel and Paul Andre (pro hac vice to be requested) and Geoffrey G. Hu
`
`(Registration No. 55,284) as its backup counsel.
`
`49731398
`
`
`
`Lead Counsel
`
`Back-U o Counsel
`
`Paul Andre
`
`
`
`
` Judy M. Mohr
`
`Registration No. 38,563
`JMohr@MWE.com
`
`
`
`
`
`(pro hac vice to be requested)
`PAndre@kramerlevin.com
`Kramer Levin Naftalis & Frankel LLP
`
`990 Marsh Road
`
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 212.715.8000
`
`(Registration No. 55,284)
`GHu@kramerlevin.com
`Kramer Levin Nafialis & Frankel LLP
`
` McDerrnott Will & Emery LLP
`
` Geoffrey G. Hu
`
`
`275 Middlefield Road
`
`Menlo Park, CA 94025
`
`Tel: 650.815.7630 Fax: 650.815.7401
`
`
`
`1177 Avenue of the Americas,
`
`New York, NY 10036
`Tel: 212.715.9100 Fax: 212.715.8000
`
`
`A Power of Attorney from Patent Owner is being submitted‘ with this Notice.
`
`IV.
`
`Service Information Pursuant To 37 C.F.R. § 42.8(b)(4)
`
`Patent Owner consents to electronic service using the following e—mail
`
`addresses:
`
`JMohr@mwe.com
`PAndre@kramerlevin.com
`GHu@kramerlevin.com
`
`Patent Owner may be served by Postal Mailing or Hand Delivery as follows:
`
`McDermott Will & Emery LLP
`275 Middlefield Road, Suite 100
`
`Menlo Park, CA 94025
`
`Tel: (650) 815-7630
`Fax: (650) 815-7401
`
`4973 I398
`
`
`
`and
`
`Kramer Levin Naftalis & Frankel LLP
`
`990 Marsh Road
`
`Menlo Park, CA 94025
`Tel: (650) 752-1710
`Fax: (650) 752-1810
`
`Respectfully submitted,
`
`Dated: February 14, 2014
`
`49731398
`
`/Judy M. Mohr/
`Judy M. Mohr
`Registration No. 38,563
`McDermott Will & Emery LLP275
`Middlefield Road
`
`Menlo Park, CA 94025
`
`Tel: (650) 815-7630
`Fax: (650) 815-7401
`
`Paul Andre
`
`(pro hac vice to be requested)
`Geoffrey G. Hu
`Registration No. 55,284
`Kramer Levin Nafialis & Frankel LLP,
`990 Marsh Road
`
`Menlo Park, CA 94025
`Tel: (650) 752-1710
`Fax: (650)752-1810
`
`Attorneys for Patent Owner
`Depomed, Inc.
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on February 14,
`
`2014, a complete and entire copy of this Mandatory Notice was provided Via
`
`Federal Express and electronic mail to the attorneys of record for Petitioner:
`
`Gasper J. LaRosa
`JONES DAY
`
`222 East 41st Street
`
`New York, New York 10017-6702
`
`E-mail:
`
`gjlarosa@j onesday.com
`knix@j onesday.com
`lqnguyen@jonesday.com
`
`/ Judy M. Mohr/
`Judy M. Mohr
`Registration No. 38,563
`
`DM_US 497313984 .08222l.0l00
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