Paper No. ___
`Filed: July 11, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________________
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`BIODELIVERY SCIENCES INTERNATIONAL, INC.
`Petitioner
`
`v.
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`RB PHARMACEUTICALS LIMITED
`Patent Owner.
`
`____________________
`
`Case IPR2014-00998
`Patent 8,475,832
`____________________
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`PATENT OWNER MANDATORY NOTICE INFORMATION
`UNDER 37 C.F.R. § 42.8(a)(2)
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`
`
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`Filed: July 11, 2014
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`BIODELIVERY SCIENCES INTERNATIONAL, INC.
`Petitioner
`
`v.
`
`RB PHARMACEUTICALS LIMITED
`Patent Owner.
`
`____________________
`
`Case IPR2014-00998
`Patent 8,475,832
`____________________
`
`PATENT OWNER MANDATORY NOTICE INFORMATION
`UNDER 37 C.F.R. § 42.8(a)(2)
`
`
`
`
`
`
`
`
`
`
`Case No. IPR2014-00998
`Patent No. 8,475,832
`
`I. REAL PARTY-IN-INTEREST
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`
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`The real parties-in-interest are RB Pharmaceuticals Limited (Patent Owner),
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`the sole owner of U.S. Patent No. 8,475,832 (ʼ832 patent), and Reckitt Benckiser
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`Pharmaceuticals, Inc. (RBP), the exclusive licensee of the ʼ832 patent in the U.S.
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`Both companies are subsidiaries of the same parent company, Reckitt Benckiser
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`Group plc. Patent Owner’s address is 103-105 Bath Road, Slough, UK. RBP’s
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`address is 10710 Midlothian Turnpike, Suite 430, Richmond, Virginia.
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`Pursuant to a written agreement with RBP, MonoSol Rx, LLC (MonoSol)
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`has exclusive manufacturing rights under the ʼ832 patent and therefore is an
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`implied, exclusive licensee thereunder. MonoSol is also the original assignee of
`
`the patent, and the named inventors were, and in some cases remain, MonoSol
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`employees. To the extent these facts are sufficient to render MonoSol a real party-
`
`in-interest, Patent Owner also identifies MonoSol under 37 CFR § 42.8(b)(1).
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`MonoSol’s address is 30 Technology Drive, Warren, New Jersey.
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`II. RELATED MATTERS
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`
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`The Petition is substantially redundant of the petition filed by the same
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`petitioner in IPR2014-00325, which was filed almost six months ago. The present
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`Petition is directed to the same claims of the same patent as the earlier petition,
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`involves the same parties, asserts the same or substantially the same contentions,
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`2
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`Case No. IPR2014-00998
`Patent No. 8,475,832
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`and is based on a subset of the references cited in the earlier petition. See Petition
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`at 2-3.
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`The ʼ832 patent was previously asserted against Petitioner in Reckitt
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`Benckiser Pharmaceuticals, Inc., RB Pharmaceuticals Limited, and MonoSol Rx,
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`LLC. v. BioDelivery Sciences International, Inc., E.D.N.C. Civil Action No. 5:13-
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`cv-760-BO. That action was subsequently dismissed without prejudice as
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`premature on procedural grounds. The ʼ832 patent has also been asserted in
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`Reckitt Benckiser Pharmaceuticals, Inc., RB Pharmaceuticals Limited, and
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`MonoSol Rx, LLC. v. Par Pharmaceutical, Inc., and IntelGenx Technologies,
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`Corp., D. Del. Civil Action No. 13-1461-RGA; Reckitt Benckiser
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`Pharmaceuticals, Inc., RB Pharmaceuticals Limited, and MonoSol Rx, LLC. v.
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`Watson Laboratories, Inc., D. Del. Civil Action No. 13-1674-RGA; Reckitt
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`Benckiser Pharmaceuticals, Inc., RB Pharmaceuticals Limited, and MonoSol Rx,
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`LLC. v. Alvogen Pine Brook, Inc., D. Del. Civil Action No. 13-2003-RGA; and
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`Reckitt Benckiser Pharmaceuticals, Inc., RB Pharmaceuticals Limited, and
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`MonoSol Rx, LLC. v. Par Pharmaceutical, Inc., and IntelGenx Technologies,
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`Corp., D. Del. Civil Action No. 14-422-RGA. The 13-1674 (Watson) and 14-422
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`(Par) Actions remain pending. (The 13-1461 (Par) and 13-2003 (Alvogen) Actions
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`were dismissed without prejudice in light of Par and Alvogen having prematurely
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`3
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`Case No. IPR2014-00998
`Patent No. 8,475,832
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`triggered the Hatch-Waxman ANDA litigation process in regard to those Actions.)
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`U.S. Application No. 13/964,975, which is a continuation of U.S.
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`Application No. 13/923,749 (now abandoned), which was a continuation of U.S.
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`Application No. 12/537,571 (ʼ571 application, now the ʼ832 patent), is pending.
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`U.S. Application No. 12/537,580, which was filed at the same time as, and shares a
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`portion of the specification of, the ʼ571 application is pending and may also
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`potentially be affected by a decision in the proceeding herein.
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`III. LEAD AND BACKUP COUNSEL AND SERVICE INFORMATION
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` Lead Counsel:
`James M. Bollinger, Esq.
`Troutman Sanders LLP
`The Chrysler Building
`405 Lexington Avenue
`New York, NY 10174
`Tel: (212) 704-6113
`Fax: (212) 704-5954
`Email: james.bollinger@troutmansanders.com
`Registration No. 32,555
`
`Backup Counsel:
`Daniel A. Ladow, Esq.
`Troutman Sanders LLP
`The Chrysler Building
`405 Lexington Avenue
`New York, NY 10174
`Tel: (212) 704-6218
`Fax: (212) 704-5929
`Email: daniel.ladow@troutmansanders.com
`Pro hac vice admission to be sought
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`4
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`Case No. IPR2014-00998
`Patent No. 8,475,832
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`Counsel consent to electronic service at their email addresses.
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`IV. PATENT OWNER PRELIMINARY RESPONSE
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`Patent Owner reserves the right to file a preliminary response at a later date.
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`Dated: July 11, 2014
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`
`
` ___/James M. Bollinger/
`James M. Bollinger
`Reg. No. 32,555
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`________
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`5
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`Case No. IPR2014-00998
`Patent No. 8,475,832
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Patent Owner
`Mandatory Notice Information Under 37 C.F.R. § 42.8(a)(2) and the associated
`power of attorney were served electronically via email on July 11, 2014, on
`attorneys for Petitioner:
`
`
`
`Danielle L. Herritt
`Kia L. Freeman
`McCARTER & ENGLISH, LLP
`265 Franklin Street
`Boston, MA 02110
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`dherritt@mccarter.com
`IPR832@mccarter.com
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`Dated: July 11, 2014
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` ___/James M. Bollinger/
`James M. Bollinger
`Reg. No. 32,555
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`________
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`6
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