`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`Petitioner
`
`v.
`
`MONOSOL RX, LLC
`Patent Owner
`
`_______________
`
`Case IPR2015-00169
`
`Patent 8,765,167
`
`_______________
`
`PATENT OWNER’S SUBMISSION OF
`MANDATORY NOTICE INFORMATION
`PURSUANT TO 37 C.F.R. § 42.8(a)
`
`
`
`IPR2015-00169
`
`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-
`
`
`
`IPR2015-00169
`
`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-
`
`
`
`IPR2015-00169
`
`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
`169ipr@hbiplaw.com
`
`-3-
`
`
`
`IPR2015-00169
`
`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-
`
`
`
`IPR2015-00169
`
`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-
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
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.
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.
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
