throbber
Case IPR2014-01259
`Patent 7,879,828
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`INITIATIVE FOR RESPONSIBILITY IN DRUG PRICING LLC,
`Petitioner
`
`v.
`
`WYETH LLC
`Patent Owner
`
`
`Case IPR2014-01259
`
`Patent 7,879,828
`
`
`
`
`
`
`
`
`
`SUBMISSION OF MANDATORY NOTICE INFORMATION
`PURSUANT TO 37 C.F.R. § 42.8(a)(2)
`
`Pursuant to 37 C.F.R. § 48.2(a)(2), Patent Owner Wyeth LLC submits the
`
`
`
`following mandatory notice information.
`
`
`
`

`
`Case IPR2014-01259
`Patent 7,879,828
`
`
`REAL PARTY-IN-INTEREST
`
`Wyeth LLC, a Delaware limited liability company having a place of
`
`business at 235 East 42nd Street, New York, New York 10017, is the owner of the
`
`entire interest in U.S. Patent No. 7,879,828 (“the ’828 patent”). PF PRISM, C.V.,
`
`a limited partnership (commanditaire vennootschap) organized and existing under
`
`the laws of the Netherlands and having offices at Blaak 40 basement, 3011 TA,
`
`Rotterdam, Netherlands, took an exclusive license in the ’828 patent. Thereafter,
`
`PF PRISM C.V. contributed its rights under the exclusive license to Pfizer
`
`Pharmaceuticals LLC, a Delaware limited liability company having a place of
`
`business at Bo. Carmelitas, Road 689, Km 1.9, Vega Baja, Puerto Rico 00693.
`
`Wyeth LLC, PF PRISM C.V., and Pfizer Pharmaceuticals LLC are wholly-owned,
`
`directly or indirectly, by Pfizer Inc., a publicly-traded company.
`
`
`
`2
`
`

`
`Case IPR2014-01259
`Patent 7,879,828
`
`
`RELATED MATTERS
`
`The following judicial and administrative matters could affect, or be affected
`
`by, a decision in this proceeding:
`
`• The ’828 patent has been asserted in the following litigation, which is
`
`currently pending: Pfizer Inc., et al. v. Fresenius Kabi USA, LLC, No.
`
`1:13-cv-01893-SLR (D. Del.); Pfizer Inc., et al. v. CFT
`
`Pharmaceuticals, LLC, No. 1:14-cv-00781-SLR (D. Del.); Pfizer Inc.,
`
`et al. v. Aurobindo Pharma Ltd., et al., No. 1:14-cv-00 872-SLR (D.
`
`Del.)
`
`• The ʼ828 patent is the subject of the following IPR proceeding,
`
`instituted, and currently pending: Apotex, Inc. v Wyeth, LLC, Case
`
`IPR2014-00115.
`
`• There is also litigation pending in the United States District Court for
`
`the District of Delaware between Apotex, Inc. and the Patent Owner
`
`arising from Apotex’s submission of an Abbreviated New Drug
`
`Application to market a generic version of Pfizer’s drug Tygacil ®.
`
`Pfizer Inc., et al. v. Apotex Inc., et al., 1:13-cv-01613-SLR (D. Del.).
`
`The ’828 patent is not asserted in that case because Apotex did not
`
`assert pursuant to 21 U.S.C. § 355(b)(2)(A)(iv) that the ’828 patent
`3
`
`
`
`

`
`Case IPR2014-01259
`Patent 7,879,828
`
`
`was invalid or would not be infringed by the manufacture, use, or sale
`
`of the drug covered by Apotex’s Abbreviated New Drug Application.
`
`• Patent Application Number 13/011,164, which was filed on January
`
`21, 2011, is pending and claims the benefit of Application Number
`
`11/374,330, which is an application in the chain leading to issuance of
`
`the ’828 patent.
`
`
`
`4
`
`

`
`Case IPR2014-01259
`Patent 7,879,828
`
`
`LEAD AND BACK-UP COUNSEL
`
`
`
`Patent Owner Wyeth LLC designates the following lead and back-up
`
`counsel:
`
`Back-Up Counsel
`David I. Berl
`Reg. No. 72,751
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`202-434-5491 (Telephone)
`202-434-5029 (Facsimile)
`dberl@wc.com
`
`Galina I. Fomenkova
`Reg. No. 72,583
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`202-434-5760 (Telephone)
`202-434-5029 (Facsimile)
`gfomenkova@wc.com
`
`
`Lead Counsel
`
`
`
`Stanley E. Fisher
`
`Reg. No. 55,820
`
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`
`202-434-5289 (Telephone)
`202-434-5029 (Facsimile)
`sfisher@wc.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`

`
`Case IPR2014-01259
`Patent 7,879,828
`
`
`SERVICE INFORMATION
`
`sfisher@wc.com
`dberl@wc.com
`tselby@wc.com
`aharber@wc.com
`gfomenkova@wc.com
`mkidd@wc.com
`jeff.rennecker@pfizer.com
`robyn.popeck@pfizer.com
`
`Stanley E. Fisher
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`
`Same as above
`
`202-434-5289
`
`202-434-5029
`
`(i)
`
`Electronic mail addresses:
`
`
`
`(ii) Postal mailing address:
`
`(iii) Hand-delivery address:
`
`(iv) Telephone Number:
`
`
`
`Facsimile number:
`
`
`
`(v)
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`
`
`
`
`
`
`
`
`

`
`Case IPR2014-01259
`Patent 7,879,828
`
`
`CONCLUSION
`
`Patent Owner Wyeth LLC believes that this submission fulfills the
`
`requirements of 37 C.F.R. § 42.8(a)(2). Please contact the undersigned counsel if
`
`any additional information is required.
`
`
`
`
`
`Respectfully submitted,
`
`
`
`Dated: August 29, 2014
`
`/Stanley E. Fisher/
`Stanley E. Fisher
`Lead Attorney for Wyeth LLC
`Reg. No. 55,820
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`Phone: 202-434-5289
`
`7
`
`
`
`
`
`

`
`Case IPR2014-01259
`Patent 7,879,828
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that the above-captioned Submission of
`
`
`
`Mandatory Notice Information Pursuant to 37 C.F.R. § 42.8(a)(2) was served on
`
`August 29, 2014, by filing this document through the Patent Review Processing
`
`System as well as delivering a copy via electronic mail upon the following
`
`attorneys of record for the Petitioner:
`
`Amir Naini
`anaini@raklaw.com
`Jay Chung
`jchung@raklaw.com
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`
`
`
`
`
`Respectfully submitted,
`
`/Stanley E. Fisher/
`Stanley E. Fisher
`Lead Attorney for Wyeth LLC
`Reg. No. 55,820
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`Phone: 202-434-5289
`
`
`
`
`
`
`
`Dated: August 29, 2014

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket