`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`PHIGENIX, INC.
`Petitioner
`
`v.
`
`IMMUNOGEN, INC.
`Patent Owner
`_____________________
`
`IPR2014-00676
`Patent 8,337,856
`_____________________
`
`IMMUNOGEN, INC.’S MANDATORY NOTICES
`
`
`
`
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`
`
`ImmunoGen, Inc.'s Mandatory Notices
`
`Patent Owner, ImmunoGen, Inc., hereby files mandatory notices pursuant to
`
`37 C.F.R. § 42.8(a)(2).
`
`A. Real Party-in-Interest (37 C.F.R. § 42.8(b)(1))
`
`The real parties-in-interest are ImmunoGen, Inc. and Genentech, Inc.
`
`
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`
`In accordance with the Office Patent Trial Practice Guide (77 Fed. Reg.
`
`48,756, at 48,760 (Aug. 14, 2012)), Patent Owner identifies the following
`
`applications and patents that claim or may claim the benefit of the priority of the
`
`filing date of U.S. Patent No. 8,337,856:
`
`• U.S. Application No. 09/811,115 filed March 16, 2001 (issued as U.S.
`
`Patent No. 6,632,979);
`
`• U.S. Application No. 09/811,123, filed March 16, 2001 (issued as U.S.
`
`Patent No. 7,097,840);
`
`• U.S. Application No. 11/488,545, filed July 17, 2006 (issued as U.S.
`
`Patent No. 7,575,748);
`
`• U.S. Application No. 12/609,737, filed October 30, 2009 (abandoned);
`
`• U.S. Application No. 13/305,042, filed November 28, 2011 (pending);
`
`and
`
`• U.S. Application No. 14/032,046, filed September 19, 2013 (pending).
`
`Patent Owner does not concede that any of these applications or patents
`
`- 1 -
`
`
`
`
`
`would affect, or be affected by, a decision in the present inter partes review of U.S.
`
`Patent No. 8,337,856.
`
`
`
`C. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`
`Patent Owner designates the following lead and back-up counsel:
`
`Eldora L. Ellison (Reg. No. 39,967) phone: 202.772.8508
`Lead Counsel:
`Back-up Counsel: Eric K. Steffe (Reg. No. 36,688) phone: 202.772.8625
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`Address:
`
`1100 New York Avenue, NW
`Washington, DC 20005
`202.371.2600 (reception)
`202.371.2540 (facsimile)
`eellison-PTAB@skgf.com
`esteffe-PTAB@skgf.com
`
`
`
`
`
`
`
`
`
`D.
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`Please direct all correspondence regarding this proceeding to the lead
`
`counsel at the address listed above. Patent Owner also consents to electronic
`
`service by email to eellison-PTAB@skgf.com and esteffe-PTAB@skgf.com.
`
`
`
`
`
`
`
`- 2 -
`
`
`
`The Patent Trial and Appeal Board is hereby authorized to charge any fees
`
`associated with this proceeding to Deposit Account 19-0036 (Customer ID
`
`
`
`No. 45324).
`
`
`
`
`
`
`
`
`
`
`
` Respectfully Submitted,
` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
` /Eldora L. Ellison/
` Eldora L. Ellison, Ph.D.
`Date: May 13, 2014
` Lead Counsel for ImmunoGen, Inc.
`
`
`
`
`
`1100 New York Avenue, N.W. Registration No. 39,967
`Washington, D.C. 20005-3934
`(202) 371-2600
`
`
`
`- 3 -
`
`
`
`
`
`
`
`
`ImmunoGen, Inc.'s Mandatory Notices
`
`CERTIFICATE OF SERVICE (37 C.F.R. §§ 42.6(e))
`
`The undersigned hereby certifies that the above-captioned “ImmunoGen,
`
`Inc.’s Mandatory Notices” was served in its entirety on May 13, 2014, upon the
`
`following parties via FedEx®:
`
`
`
`
`Ping Wang
`
`ANDREWS KURTH, LLP
`1350 I Street NW, Suite 1100
`Washington, DC 20005
`
`
`Tel: (202) 662-3042
`
`
`Fax: (202) 662-3729
`
`
`PingWang@andrewskurth.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`Gregory Porter
`ANDREWS KURTH, LLP
`600 Travis, Suite 4200
`Houston, TX 77002
`Tel: (712) 220-4621
`Fax: (712) 220-4257
`GregPorter@andrewskurth.com
`
` Respectfully Submitted,
` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`
` /Eldora L. Ellison/
` Eldora L. Ellison, Ph.D.
`Date: May 13, 2014
` Counsel for Patent Owner ImmunoGen, Inc.
`
`
`
`
`
`1100 New York Avenue, N.W. Registration No. 39,967
`Washington, D.C.20005-3934
`(202) 371-2600
`1846304.1
`
`
`
`
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