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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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`UNIVERSITY OF UTAH RESEARCH FOUNDATION ET AL.
`Patent Owners
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`Case IPR2014-01316
`Patent 5,753,441
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`PATENT OWNERS UNIVERSITY OF UTAH RESEARCH FOUNDATION
`ET AL.
`MANDATORY NOTICES
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`Case IPR2014-01316
`Attorney Docket No: 28496-0025IP1
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`PATENT OWNERS’ MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8
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`Pursuant to 37 C.F.R. § 42.8, the patent owners, UNIVERSITY OF UTAH
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`RESEARCH FOUNDATION and the DEPARTMENT OF HEALTH AND
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`HUMAN SERVICES OF THE UNITED STATES OF AMERICA (“Patent
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`Owners”), hereby submit the following Mandatory Notices in response to the
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`Petition for Inter Partes Review of U.S. Patent No. 5,753,441.
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`1.
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`Real Party-In-Interest under 37 CFR § 42.8(b)(1)
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` UNIVERSITY OF UTAH RESEARCH FOUNDATION and the
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`DEPARTMENT OF HEALTH AND HUMAN SERVICES OF THE UNITED
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`STATES OF AMERICA are the patent owners and real parties-in-interest in this
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`proceeding. Other real parties-in-interest are University of Utah and Myriad
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`Genetics, Inc.
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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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`Administrative matters: Petitioner, GeneDx, has filed IPR petitions against
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`the following patents that are either owned or licensed by Myriad Genetics:
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`1. U.S. 7,838,237 (IPR 2014-01296);
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`2. U.S. 7,670,776 (IPR 2014-01298);
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`2
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`Case IPR2014-01316
`Attorney Docket No: 28496-0025IP1
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`3. U.S. 7,563,571 (IPR 2014-01299);
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`4. U.S. 7,622,258 (IPR 2014-01301);
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`5. U.S. 5,654,155 (IPR 2014-01310);
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`6. U.S. 6,033,857 (IPR 2014-01311);
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`7. U.S. 6,083,698 (IPR 2014-01312);
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`8. U.S. 6,051,379 (IPR 2014-01313);
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`9. U.S. 6,951,721 (IPR 2014-01314);
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`10. U.S. 7,470,510 (IPR 2014-01315).
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`Judicial matters: The ’441 patent was asserted against GeneDx in Univ. of
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`Utah Research Found. et al., v. GeneDx, Inc., No. 2:13-CV-00954-RJS (D. Utah),
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`filed on October 16, 2013. The ’441 patent is also currently involved in the
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`following judicial proceedings: Univ. of Utah Research Found., et al. v. Ambry
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`Genetics Corp., 2:13-cv-00640- RJS (D. Utah); Quest Diagnostics Inc. et al. v.
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`Myriad Genetics, Inc., No. 13-CV-1587-AG (C.D. Cal.); Univ. of Utah Research
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`Found., et al. v. Quest Diagnostics Inc. et al., 2:13-CV-00967-RJS (D. Utah);
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`Counsyl Inc. v. Myriad Genetics, Inc., No. 5:13-cv-04391-EJD (N.D. Cal.); InVitae
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`Corp. v. Myraid Genetics, Inc., 3:13-cv-05495 (N.D. Cal.); Univ. of Utah Research
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`Found., et al. v. Laboratory Corp. of America Holdings, 2:13-cv-01069-RJS (D.
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`Utah); and Univ. of Utah Research Found., et al. v. Pathway Genomics Corp.,
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`2:14-cv-000442-RJS (D. Utah). The above actions have been transferred to and
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`3
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`Case IPR2014-01316
`Attorney Docket No: 28496-0025IP1
`consolidated for pretrial proceedings in the District of Utah by the Judicial Panel
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`on Multidistrict Litigation. In re: BRCA1- and BRCA2-Based Hereditary Cancer
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`Test Patent Litigation, MDL Case No. 2:14-MD-02510-RJS.
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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:
` (612) 288-9696
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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) 337-2554
`Email: IPR28496-0025IP1@fr.com
`Fax: (612) 288-9696
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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 IPR28496-0025IP1@fr.com
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`(ref.: Docket No. 28496-0025IP).
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`Date:/September 22, 2014/
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`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (612) 335-5070
`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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`4
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`Case IPR2014-01316
`Attorney Docket No: 28496-0025IP1
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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 22, 2014, a complete and entire copy of this Patent Owner
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`UNIVERSITY OF UTAH RESEARCH FOUNDATION ET AL. Mandatory
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`Notices and Power of Attorney were provided via email, to the Petitioner by
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`serving the correspondence address of record as 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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`5
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`/Jessica K. Detko/
`Jessica K. Detko
`Fish & Richardson P.C.
`60 South Sixth Street, Suite 3200
`Minneapolis, MN 55402
`(612) 337-2516
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