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`Inter Partes Review No. IPR2015-00005
`U.S. Patent No. 8,455,524
`
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`
`Sandoz Inc.
`Petitioner
`
`v.
`
`EKR Therapeutics, LLC
`Patent Owner
`
`
`Patent No. 8,455,524
`Issue Date: June 4, 2013
`
`Title: Methods of Treatment with Pre-Mixed, Ready-To-Use
`Pharmaceutical Compositions
`
`
`Inter Partes Review No. IPR2015-00005
`
`
`__________________
`
`
`PATENT OWNER MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8(a)(2)
`
`
`
`
`
`
`
`I.
`
`Inter Partes Review No. IPR2015-00005
`U.S. Patent No. 8,455,524
`
`Real Party-In-Interest [37 C.F.R. § 42.8(b)(1)]
`
`The real parties-in-interest include:
`
`• EKR Therapeutics, LLC
`1255 Crescent Green Drive, Suite 250, Cary, North Carolina 27518
`Owns all right, title, and interest in and to U.S. Patent No. 8,455,524
`
`• Chiesi USA, Inc. and Cornerstone BioPharma, Inc.
`1255 Crescent Green Drive, Suite 250, Cary, North Carolina 27518
`Markets commercial embodiments of the inventions claimed in U.S. Patent
`No. 8,455,524
`II. Related matters [37 C.F.R. § 42.8(b)(2)]
`Patent Infringement Actions
`A.
`Chiesi USA, Inc., Cornerstone BioPharma, Inc. and EKR Therapeutics, LLC
`
`have asserted U.S. Patent No. 8,455,524 against Petitioner Sandoz Inc, along with
`
`Sandoz AG and ACS Dobfar Info SA, in the patent infringement action captioned:
`
`• Chiesi USA, Inc. et al. v. Sandoz Inc. et al., Civil Action No. 1:13-cv-05723-
`NLH-AMD (U.S. District Court for the District of New Jersey).
`
`Chiesi USA, Inc., Cornerstone BioPharma, Inc. and EKR Therapeutics, LLC
`
`have also asserted U.S. Patent No. 8,455,524 against Exela Pharma Sciences, LLC,
`
`Exela PharmSci, Inc., and Exela Holdings, Inc. in the patent infringement action
`
`captioned:
`
`• Cornerstone Therapeutics Inc. (n/k/a Chiesi USA, Inc.) et al. v. Exela
`Pharma Sciences, LLC, et al., Civil Action No. 1:13-cv-01275-GMS (U.S.
`District Court for the District of Delaware).
`
`
`
`1
`
`
`
`
`
`Inter Partes Review No. IPR2015-00005
`U.S. Patent No. 8,455,524
`
`B. Related Patents/Applications
`• U.S. Patent No. 7,612,102 issued from application no. 11/788,076, which
`claims priority to provisional application no. 60/793,074.
`
`• U.S. Patent No. 7,659,290 issued from application no. 12/407,551, which is
`a division of application no. 11/788,076, now U.S. Patent No. 7,612,102.
`
`• U.S. Patent No. 7,659,291 issued from application no. 12/407,557, which is
`a division of application no. 11/788,076, now U.S. Patent No. 7,612,102.
`
`• U.S. Patent No. 8,455,524 issued from application no. 12/971,084, which is
`a continuation of application no. 12/407,557, now U.S. Patent No.
`7,659,291, which is a division of application no. 11/788,076, now U.S.
`Patent No. 7,612,102.
`
`• Application no. 12/645,169 (pending) is a continuation of application no.
`12/407,557, now U.S. Patent No. 7,659,291, which is a division of
`application no. 11/788,076, now U.S. Patent No. 7,612,102.
`
`• Application no. 12/977,965 (pending) is a continuation of application no.
`12/645,169 (pending), which is a continuation of application no. 12/407,557,
`now U.S. Patent No. 7,659,291, which is a division of application no.
`11/788,076, now U.S. Patent No. 7,612,102.
`C. Related Inter Partes Review Proceedings
`Petitioner Sandoz Inc. filed the following petitions for inter partes review
`
`concurrently with the present petition:
`
`• U.S. Patent No. 7,659,290 (Inter Partes Review No. IPR2015-00007)
`
`• U.S. Patent No. 7,659,291 (Inter Partes Review No. IPR2015-00008)
`
`• U.S. Patent No. 7,612,102 (Inter Partes Review No. IPR2015-00006)
`
`2
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`
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`Inter Partes Review No. IPR2015-00005
`U.S. Patent No. 8,455,524
`
`
`III. Lead and Back-Up Counsel [37 C.F.R. § 42.8(b)(3)]
`A. Lead Counsel
`Edgar H. Haug (Registration No. 29309)1
`FROMMER LAWRENCE & HAUG LLP
`745 Fifth Avenue
`New York, New York 10151
`Telephone: (212) 588-0800
`Facsimile: (212) 588-0500
`Email Address: ipr.chiesi@flhlaw.com
`
`B.
`
`Back-Up Counsel
`Nicholas F. Giove (Registration No. 57107)2
`FROMMER LAWRENCE & HAUG LLP
`745 Fifth Avenue
`New York, New York 10151
`Telephone: (212) 588-0800
`Facsimile: (212) 588-0500
`Email Address: ipr.chiesi@flhlaw.com
`
`C. Back-Up Counsel
`Angus Chen
`FROMMER LAWRENCE & HAUG LLP
`745 Fifth Avenue
`New York, New York 10151
`Telephone: (212) 588-0800
`Facsimile: (212) 588-0500
`Email Address: ipr.chiesi@flhlaw.com
`
`Patent owner hereby requests authorization to file a motion for Angus Chen
`
`
`
`to appear pro hac vice. Mr. Chen is an experienced patent litigator and has an
`
`1 Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney for Edgar H. Haug has
`been filed concurrently herewith.
`2 Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney for Nicholas F. Giove has
`been filed concurrently herewith.
`
`3
`
`
`
`
`established familiarity with the subject matter at issue in these proceedings by
`
`Inter Partes Review No. IPR2015-00005
`U.S. Patent No. 8,455,524
`
`virtue of his role as counsel for Chiesi USA, Inc., Cornerstone BioPharma, Inc. and
`
`EKR Therapeutics, LLC in the above-referenced patent infringement actions. See
`
`supra § II.A. Patent owner will file Mr. Chen’s motion for pro hac vice with a
`
`corresponding Power of Attorney once authorization is granted.
`
`IV. Service Information [37 C.F.R. § 42.8(b)(4)]
`Name:
`Edgar H. Haug (Registration No. 29309)
`Postal Mailing Address and
`FROMMER LAWRENCE & HAUG LLP
`Hand Delivery Address:
`745 Fifth Avenue
`New York, New York 10151
`(212) 588-0800
`(212) 588-0500
`ipr.chiesi@flhlaw.com
`
`Telephone:
`Facsimile:
`Email Address:
`
`
`
`
`4
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`
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`Inter Partes Review No. IPR2015-00005
`U.S. Patent No. 8,455,524
`
`Certificate of Service
`
`The undersigned hereby certifies that a true and accurate copy of the
`
`foregoing PATENT OWNER MANDATORY NOTICES PURSUANT TO 37
`
`C.F.R. §42.8(a)(2) was served by U.S. EXPRESS MAIL® on October 21, 2014 on
`
`lead and back-up counsel for Petitioner at the address of record indicated below:
`
`Matthew Kreeger (Reg. No. 56,398)
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, CA 94105
`MKreeger@mofo.com
`Telephone: (415) 268-6467
`Facsimile: (415) 268-7522
`
`Matthew D’Amore (Reg. No. 42,457)
`MORRISON & FOERSTER LLP
`250 West 55th Street
`New York, NY 10019-9601
`MDAmore@mofo.com
`Telephone: (212) 468-8168
`Facsimile: (212) 468-7900
`
`Elizabeth Cary Miller (Reg. No. 54,708)
`MORRISON & FOERSTER LLP
`12531 High Bluff Drive, Suite 100
`San Diego, CA 92130-2040
`EMiller@mofo.com
`Telephone: (858) 314-7717
`Facsimile: (858) 720-5125
`
`
`
`
`David J. Austin (Reg. No. 61,126)
`MORRISON & FOERSTER LLP
`250 West 55th Street
`New York, NY 10019-9601
`DAustin@mofo.com
`Telephone: (212) 336-4091
`Facsimile: (212) 468-7900
`
` Date: October 21, 2014
`
`By: s/ Edgar H. Haug
`Registration No. 29309
`FROMMER LAWRENCE & HAUG LLP
`745 Fifth Avenue
`New York, New York 10151
`Telephone: (212) 588-0800
`Facsimile: (212) 588-0500
`Email Address: ipr.chiesi@flhlaw.com
`
`Lead Counsel for Patent Owner
`
`
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