`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`Petitioner
`
`v.
`
`MONOSOL RX, LLC
`Patent Owner
`
`_______________
`
`Case IPR2015-00167
`
`Patent 8,765,167
`
`_______________
`
`PATENT OWNER’S SUBMISSION OF
`MANDATORY NOTICE INFORMATION
`PURSUANT TO 37 C.F.R. § 42.8(a)
`
`
`
`IPR2015-00167
`
`U.S. Patent No. 8,765,167
`
`Pursuant to 37 C.F.R. § 42.8(a), MonoSol Rx, LLC (“MonoSol” or “Patent
`
`Owner”) submits herewith the following required mandatory notice information.
`
`I.
`
`Real party-in-interest (37 C.F.R. § 42.8(b)(1))
`
`The real party-in-interest is the Patent Owner of U.S. Patent No. 8,765,167
`
`(“the ‘167 Patent”), MonoSol Rx, LLC , 30 Technology Drive, Warren, New
`
`Jersey, 07059, a Delaware limited liability company.
`
`Pursuant to a written agreement with Patent Owner, Reckitt Benckiser
`
`Pharmaceuticals Inc., 10710 Midlothian Turnpike, Suite 430, Richmond, Virginia,
`
`23235, a Delaware corporation (“RBP”), is an exclusive licensee under the ‘167
`
`Patent for Suboxone® sublingual film and other products and holds the
`
`exclusionary rights to market and sell Suboxone® sublingual film in the United
`
`States. On September 22, 2014, RBP and Patent Owner filed a complaint against
`
`Petitioner, inter alia, for infringement of the ‘167 Patent captioned Reckitt
`
`Benckiser Pharmaceuticals Inc. and Monosol Rx, LLC v. Biodelivery Sciences
`
`International, Inc. and Quintiles Commercial US, Inc., 3:14-cv-5892 (D.N.J.). To
`
`the extent these facts are sufficient to render RBP a real party-in-interest, Patent
`
`Owner also identifies RBP under 37 C.F.R. § 42.8(b)(1).
`
`-1-
`
`
`
`IPR2015-00167
`
`U.S. Patent No. 8,765,167
`
`II.
`
`Related matters (37 C.F.R. § 42.8(b)(2))
`
`Other than as noted below, Patent Owner is not aware of any other judicial
`
`or administrative matter (see 77 Fed. Reg. 48,756, 48,760 (August 14, 2012)) that,
`
`potentially or actually, would affect, or be affected by, a decision in the
`
`proceeding herein.
`
`On May 21, 2014, Patent Owner filed a continuation patent application,
`
`serial number 14/284,019, of patent application serial number 11/517,982, which
`
`subsequently issued as the ‘167 Patent on July 1, 2014.
`
`On September 22, 2014, RBP and Patent Owner filed a complaint against
`
`Petitioner, inter alia, for infringement of the ‘167 Patent captioned Reckitt
`
`Benckiser Pharmaceuticals Inc. and Monosol Rx, LLC v. Biodelivery Sciences
`
`International, Inc. and Quintiles Commercial US, Inc., 3:14-cv-5892 (D.N.J.).
`
`-2-
`
`
`
`IPR2015-00167
`
`U.S. Patent No. 8,765,167
`
`III. Lead and Back-up Counsel (37 C.F.R. § 42.8(b)(3) & 37 C.F.R. §
`42.10(a)&(b))
`
`Hoffmann & Baron, LLP, counsel of record in the subject patent or
`
`application, on behalf of Patent Owner, designates the following individuals as
`
`Patent Owner’s lead counsel and back-up counsel:
`
`Lead Counsel
`
`Back-up Counsel
`
`Daniel A. Scola, Jr.
`PTO Reg. No. 29,855
`dscola@hbiplaw.com
`(973) 585-2003
`
`Michael I. Chakansky
`PTO Reg. No. 31,600
`mchakansky@hbiplaw.com
`(973) 585-2024
`
`Both partners at Hoffmann & Baron, LLP, 6 Campus Drive, Parsippany, New
`
`Jersey 07054 (Tel: 973.331.1700).
`
`V.
`
`Service information pursuant to 37 C.F.R. §42.8(b)(4))
`
`Service on Patent Owner may be made electronically by using all the
`
`following three email addresses together in providing service:
`
`dscola@hbiplaw.com
`mchakansky@hbiplaw.com
`167ipr@hbiplaw.com
`
`-3-
`
`
`
`IPR2015-00167
`
`U.S. Patent No. 8,765,167
`
`Service on Patent Owner may be made by Postal Mailing or Hand-delivery as
`
`follows, but electronic service as indicated above is always requested:
`
`Daniel A. Scola, Jr. (Lead Counsel)
`Michael I. Chakansky (Back-up Counsel)
`Hoffmann & Baron, LLP
`6 Campus Drive
`Parsippany, New Jersey 07054
`Tel: 973.331.1700
`Fax: 973.331.1717
`
`Dated: November 14, 2014
`
`Respectfully submitted,
`
` HOFFMANN & BARON, LLP
`/Daniel A. Scola, Jr./
` 6900 Jericho Turnpike
`Daniel A. Scola, Jr.
`Registration No. 29,855 Syosset, New York 11791
`Michael I. Chakansky
` (973) 331-1700
`Registration No. 31,600
`
`Attorneys for Petitioner MonoSol Rx, LLC
`
`-4-
`
`
`
`IPR2015-00167
`
`U.S. Patent No. 8,765,167
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this the 14th day of November, 2014, the foregoing
`
`PATENT OWNER’S SUBMISSION OF MANDATORY NOTICE
`
`INFORMATION PURSUANT TO 37 C.F.R. § 42.8(a) was served in its entirety
`
`on the following counsel of record by electronic service by email at the email
`
`addresses consented to for service as provided in the Petition, Paper 2, at page 4,
`
`and as set forth below:
`
`Danielle L. Herritt, Esq.
`McCARTER & ENGLISH LLP
`265 FRANKLIN STREET
`BOSTON, MASSACHUSETTS 02110
`
`dherritt@mccarter.com
`IPR167@mccarter.com
`
`By:
`
`/Michael I. Chakansky/
`Michael I. Chakansky (Reg. No. 31,600)
`Hoffmann & Baron, LLP
`6 Campus Drive
`Parsippany, N.J. 07054
`mchakansky@hbiplaw.com
`Tel: 973.331.1700
`
`-5-
`
`
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