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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`GENEDX, INC.
`Petitioner
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`v.
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`MYRIAD GENETICS, INC.
`Patent Owner
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`Case 2014-01313
`Patent 6,051,379
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`PATENT OWNER MYRIAD GENETIC’S
`MANDATORY NOTICES
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`Case 2014-01313
`Attorney Docket No: 28496-0022IP1
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`PATENT OWNER’S MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8
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`Pursuant to 37 C.F.R. § 42.8, the patent owner, MYRIAD GENETICS, INC.
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`(“Patent Owner”), hereby submits the following Mandatory Notices in response to
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`the Petition for Inter Partes Review of U.S. Patent No. 6,051,379.
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`1.
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`Real Party-In-Interest under 37 CFR § 42.8(b)(1)
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`MYRIAD GENETICS, INC. is the Patent Owner and the Real Party-In-
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`Interest in this proceeding.
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`2.
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`Related Matters under 37 CFR § 42.8(b)(2)
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`The following judicial or administrative matters may affect or be affected by
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`a decision in this proceeding:
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`Judicial matters: The '379 patent has been asserted against GENEDX in
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`Univ. of Utah Research Foundation et al. v. GeneDx, No. 2-13-cv-00954 (D. Utah
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`Oct. 16, 2013) and against others in cases consolidated into: In Re: BRCA1- and
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`BRCA2- Based Hereditary Cancer Test Patent Litigation, No. 2-14-md-02510 (D.
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`Utah Feb. 25, 2014); Invitae Corporation v. Myriad Genetics, Inc., No. 3-13-cv-
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`05495 (N. D. Cal. Nov. 26, 2013); Quest Diagnostics Inc. et al. v. Myriad
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`Genetics, Inc., No. 8-13-cv-01587 (C. D. Cal. Oct. 10, 2013); Counsyl, Inc v.
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`Myriad Genetics, Inc., 5-13-cv-04391 (N. D. Cal. Sep. 20, 2013); Univ. of Utah
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`Research Foundation et al v. Gene by Gene, Ltd., No. 2-13-cv-00643 (D. Utah Jul.
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`2
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`Case 2014-01313
`Attorney Docket No: 28496-0022IP1
`10, 2013). GDX1030. Administrative matters: Petitioner GeneDx filed Petitions
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`for IPR on August 18, 2014 of U.S. Patent Nos. 5,654,155; 5,753,441; 6,033,857;
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`6,083,698; and 6,951,721 concurrently with the ‘379 petition.
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`3.
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`Lead and Back-Up Counsel, under 37 CFR § 42.8(b)(3)
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`The Patent Owner designates the following lead and back-up counsel:
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`LEAD COUNSEL
`Dorothy P. Whelan, Reg. No. 33,814
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (612) 337-2509
`Email: Whelan@fr.com
`Fax:
` (202) 783-2331
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`4.
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`BACK-UP COUNSEL
`J. Patrick Finn, III, Reg. No. 44,109
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Tel: (612) 337-2509
`Email: IPR28496-0022IP1@fr.com
`Fax: (202) 783-2331
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`Service Information under 37 CFR § 42.8(b)(4)(i) et seq.
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`Please address all correspondence and service to both counsel as listed
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`above. Patent Owner consents to service by email at IPR28496-0022IP1@fr.com
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`(ref.: Docket No. 28496-0022IP).
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`Date:/September 8, 2014/
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`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (612) 337-2508
`Facsimile: (612) 288-9696
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`Respectfully submitted,
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`/Dorothy P. Whelan/
`Dorothy P. Whelan
`Reg. No. 33,814
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`3
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`Case 2014-01313
`Attorney Docket No: 28496-0022IP1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR §§ 42.6(e)(4) and 42.205(b), the undersigned certifies
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`that on September 8, 2014, a complete and entire copy of this Patent Owner
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`MYRIAD GENETIC’s Mandatory Notices and Power of Attorney were provided
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`via email, to the Petitioner by serving the correspondence address of record as
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`follows:
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`Eldora L. Ellison
`Deborah A. Sterling
`Ralph W. Powers III
`Sterne, Kessler, Goldstein & Fox, P.L.L.C.
`1100 New York Avenue, NW
`Washington, DC 20005
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`Email: eellison-PTAB@skgf.com
`dsterlin-PTAB@skgf.com
`tpowers-PTAB@skgf.com
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`4
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` /Susan C. Johnson/
`Susan C. Johnson
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(214) 292-4086
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