`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ENDO PHARMACEUTICALS, INC.
`Petitioner
`
`v.
`
`DEPOMED, INC.
`Patent Owner
`____________
`
`Case IPR2014-00656
`U.S. Patent No. 6,635,280
`____________
`
`
`
`Before Althea Wilburn, Trial Paralegal.
`
`PATENT OWNER DEPOMED, INC.'S SUBMISSION OF MANDATORY
`
`NOTICE INFORMATION 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 No.
`
`6,635,280 ("the '280 Patent") by virtue of an Assignment from the inventors, John
`
`W. Shell, Jenney 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 litigations:
`
`• Depomed, Inc. v. Actavis Elizabeth LLC et al., 3:12-cv-01358-JAP-
`
`TJB (D.N.J.), filed March 2, 2012.
`
`• Depomed, Inc. v. Zydus Pharm. (USA) Inc. et al., 3:12-cv-02813-JAP-
`
`TJB (D.N.J.), filed May 9, 2012.
`
`• Depomed, Inc. v. Purdue Pharma L.P. et al., 3:13-cv-00571-MAS-
`
`TJB (D.N.J.), filed January 29, 2013.
`
`
`
`2
`
`
`
`• Depomed, Inc. v. Endo Pharmaceuticals Inc., 3:13-02467-MLC-TJB
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`(D.N.J.), filed April 17, 2013.
`
`The '280 Patent was the subject of the following concluded litigations:
`
`• Depomed, Inc. v. Watson Laboratories, Inc. – Florida et al., 1:13-cv-
`
`00342 (D.Del.), filed February 28, 2013.
`
`• Depomed, Inc. v. Impax Laboratories, Inc. et al., 3:12-cv-02154
`
`(D.N.J.), filed April 10, 2012.
`
`• Depomed, Inc. et al. v. Sun Pharma Global FZE et al., 3:11-cv-03553
`
`(D.N.J.), filed June 20, 2011.
`
`• Depomed, Inc. v. Lupin Pharmaceuticals, Inc. et al., 4:09-cv-05587
`
`(N.D.Cal.), filed November 25, 2009.
`
`• Depomed, Inc. v. Ivax Corp. et al., 3:06-cv-00100 (N.D.Cal.), filed
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`January 9, 2006.
`
`The '280 Patent claims priority to the application that issued as U.S. Patent
`
`No. 6,340,475 ("the '475 Patent"). The '475 Patent is the subject of the following
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`pending Inter Partes Review proceeding:
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`• IPR2014-00378
`
`• IPR2014-00379
`
`• IPR2014-00653
`
`• IPR2014-00654
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`
`
`3
`
`
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`The '280 Patent is also the subject of the following pending Inter Partes
`
`Review proceeding:
`
`• IPR2014-00377
`
`• IPR2014-00655
`
`III. Lead And Back-Up Counsel Pursuant to 37 C.F.R. §42.8(b)(3)
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`Patent Owner hereby designates Arlene L. Chow (Registration No. 47,489)
`
`as its lead counsel and Eric J. Lobenfeld (pro hac vice to be requested) as its
`
`backup counsel.
`
`Lead Counsel
`
`Back-Up Counsel
`
`Arlene L. Chow
`Registration No. 47,489
`arlene.chow@hoganlovells.com
`HOGAN LOVELLS US LLP
`875 Third Avenue
`New York, New York 10022
`Tel: (212) 918-3000
`Fax: (212) 918-3100
`
`
`Eric J. Lobenfeld
`(pro hac vice to be requested)
`eric.lobenfeld@hoganlovells.com
`HOGAN LOVELLS US LLP
`875 Third Avenue
`New York, New York 10022
`Tel: (212) 918-3000
`Fax: (212) 918-3100
`
`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)
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`Patent Owner consents to electronic service using the following email
`
`addresses:
`
`arlene.chow@hoganlovells.com
`eric.lobenfeld@hoganlovells.com
`peter.noh@hoganlovells.com
`
`
`
`4
`
`
`
`Patent Owner may be served by Postal Mailing or Hand Delivery as follows:
`
`HOGAN LOVELLS US LLP
`875 Third Avenue
`New York, New York 10022
`Tel: (212) 918-3000
`Fax: (212) 918-3100
`
`Dated: May 7, 2014
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/ Arlene Chow /
`Arlene L. Chow
`Registration No. 47,489
`Eric J. Lobenfeld
`(pro hac vice to be requested)
`HOGAN LOVELLS US LLP
`875 Third Avenue
`New York, New York 10022
`Tel: (212) 918-3000
`Fax: (212) 918-3100
`
`Attorneys for Patent Owner Depomed, Inc.
`
`
`
`5
`
`
`
`
`
`CERTIFIATE OF SERVICE
`
`Pursuant to 37 CFR § 42.6(e), the undersigned certifies that on May 7, 2014,
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`a complete and entire copy of this Mandatory Notice was provided via Federal
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`Express and electronic mail to the attorneys of record for Petitioner:
`
`Bruce C. Haas
`FITZPATRICK, CELLA, HARPER& SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`
`Email:
`
`bhaas@fchs.com
`hrenk@fchs.com
`syam@fchs.com
`
`/ Arlene Chow /
`Arlene L. Chow
`Registration No. 47,489
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