UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`C.R. BARD, INC.
`
`Petitioner
`
`V.
`
`MEDLINE INDUSTRIES, INC.
`Patent Owner
`
`Patent No. 8,631,935
`
`Filing Date: June 30, 2009
`Issue Date: January 21, 2014
`
`Title: CATHETER TRAY, PACKAGING SYSTEM, INSTRUCTION INSERT,
`AND ASSOCIATED METHODS
`
`
`
`Inter Partes Review N0.: IPR20 1 5—005 ll
`Petition Filed: December 30 2014
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`C.R. BARD, INC.
`
`Petitioner
`
`V.
`
`MEDLINE INDUSTRIES, INC.
`Patent Owner
`
`Patent No. 8,631,935
`
`Filing Date: June 30, 2009
`Issue Date: January 21, 2014
`
`Title: CATHETER TRAY, PACKAGING SYSTEM, INSTRUCTION INSERT,
`AND ASSOCIATED METHODS
`
`
`
`Inter Partes Review N0.: IPR20 1 5—005 ll
`Petition Filed: December 30 2014
`
`
`
`
`
`IPR Case No.: IPR2015-00511
`
`Attorney Docket No.: MDLN—017/00US
`Patent Owner’s Mandatory Notices
`
`PATENT OWNER’S MANDATORY NOTICES
`
`UNDER 37 C.F.R. § 42.8
`
`Pursuant to 37 C.F.R. § 42.8, the patent owner, Medline Industries, Inc.
`
`(“Patent Owner”), hereby submits the following mandatory notices in response to
`
`the Petition for Inter Partes Review of United States Patent No. 8,631,935
`
`(“Petition”) filed on December 30, 2014:
`
`1.
`
`Real Parg-In-Interest under 37 C.F.R. § 42.81bM1).
`
`Medline Industries, Inc. is the patent owner and the real party-in-interest in
`
`this proceeding.
`
`2.
`
`Related Matters under 37 C.F.R. § 42.81bMZ).
`
`The following judicial or administrative matters may affect or be affected by
`
`a decision in this proceeding:
`
`US. Patent No. 8,631,935 (“‘935 Patent”) was asserted in a patent litigation
`
`in the US. District Court for the Northern District of Illinois (“Litigation”). The
`
`Litigation, which was filed by the Patent Owner on May 16, 2014, is styled as
`
`Medline Industries, Inc. v. CR. Bard, Inc, Case No. 1:14—cv-03618. Claims 1—4,
`
`7-8, 10—23, 25, 27—28, and 30-34 of the ‘935 Patent were asserted in the Litigation.
`
`The present Petition requests review of claims 1-4 and 11-20 of the ‘935 Patent.
`
`Patent Owner also asserted related US. Patent Nos. 8,678,190 C” 190
`
`Patent”), and 8,448,786 (“786 Patent”) in the Litigation.
`
`2
`
`
`
`IPR Case N0.:
`
`IPR2015—00511
`
`Attorney Docket N0.: MDLN—O l 7/00US
`Patent Owner’s Mandatory Notices
`
`In addition to this Petition, Petitioner has filed a petition for inter partes
`
`review of the ‘786 Patent, the ‘190 patent, and a second petition for inter partes
`
`review of the ‘935 Patent on December 30, 2014. These petitions are pending and
`
`have been assigned the following case numbers by the Patent Trial and Appeal
`
`Board: lPR2015-00509 and IPR2015—00514, and IPR2015—00513, respectively.
`
`Additionally, Patent Owner owns several other US. patents and pending
`
`applications that claim priority to, provide a priority claim for or share a common
`
`priority application with the ‘935 Patent. In accordance with the guidance set forth
`
`in 77 Fed. Reg. 157, pp. 48617, 48629 (August 14, 2012), the table below lists
`
`these commonly owned patents / applications that may be considered as “related
`
`matters” under 37 CPR. 42.8.
`
`"
`
`Pending
`
`"""
`
`
`Application Serial Noim
`"Patent No.
`Status
`
`i 13/153,265
`
`
`
`Pending
`13/353 ,3 00
`
`
`Pending
`12/647,515
`
`13/3 74,509
`1 Pending
`
`13/860,902
`1 Pending
`
`
`12/846,675
`
`8,746,452
`
`Patented
`
`
`
`
`
`
`
`
`
`
`
`
`
`lPR Case No.:
`
`lPR2015—00511
`
`Attorney Docket No.: MDLN—017/00US
`Patent Owner’s Mandatory Notices
`
`Application SErial No.
`Patent No.
`Status
`1
`13/155,026
`8,448,786
`Patented
`
`
`
`13/155,053
`
`8,678,190
`
`Patented
`
`IPR2015-509
`
`IPR2015-00514
`
`
`
`[L 14/165,044
`
`iPending
`
`
`
`
`
`14/265,909
`
`Pending
`
`Pending
`14/265,920
`
`
`3.
`
`Lead and Back-Up Counsel under 37 C.F.R. § 42.81bM3).
`
`The Patent Owner designates the following lead and back-up counsel.
`
`
`LEAD COUNSEL
`
`BACK-UP COUNSEL
`
`
`
`
`Christopher C. Campbell (Reg. No. 37,291)
`ccampbell@cooley.com
`zpatdcdocketing@cooley.corn
`
`John R. Mills (Reg. No. 56,414)
`jmills@cooley.com
`zpatdcdocketing@cooley.com
`
`Cooley LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave., NW, Suite 700
`Washington, DC 20004
`Tel: (703) 456-8133
`Fax: (202) 842-7899
`
`Cooley LLP
`ATTN: Patent Group
`1299 Pennsylvania Ave, NW, Suite 700
`Washington, DC 20004
`Tel: (703) 456-8171
`J Fax: (202) 842-7899
`
`
`
`
`
`lPR Case N0.:
`
`IPR2015—0051 l
`
`Attorney Docket N0.: MDLN—017/00US
`Patent Owner’s Mandatory Notices
`
`4.
`
`Service Information under 37 C.F.R. § 42.8mm.
`
`Please address all correspondence to the lead counsel and the back—up
`
`counsel as shown above. The Patent Owner consents to electronic service by e-
`
`mail at the e—mail addresses provided above, which include both individual e-mail
`
`addresses and a general docketing e-mail address.
`
`Respectfully submitted,
`COOLEY LLP
`
`DATE:
`
`1 la an lg
`
`COOLEY LLP
`
`ATTN: Patent Group
`
`1299 Pennsylvania Avenue NW, Suite 700
`Washington, DC 20004
`
`Tel: (703) 456—8567
`Fax: (202) 842—7899
`
`By: w
`
`
`
`g
`
`
`
`/
`
`CWMQMWQ~K§y>
`
`
`" ampbell
`Christopher C.
`Reg. No. 37,291
`
`
`
`IPR Case N0.: IPR2015—00511
`
`Attorney Docket N0.: MDLN—017/OOUS
`Patent Owner’s Mandatory Notices
`
`CERTIFICATE OF SERVICE
`
`I hereby certify pursuant to 37 CPR. § 42.6 that a complete copy of:
`
`0 Patent Owner’s Mandatory Notices Under 37 C.F.R. § 42.8; and
`
`0
`
`this Certificate of Service
`
`are being served electronically (as consented to by the Petitioner), on the 20th day
`of January, 2015, the same day as the filing of the above-identified documents in
`the United States Patent and Trademark Office (USPTO), upon:
`
`Richard F. Giunta
`
`WOLF GREENFIELD & SACKS, RC.
`600 Atlantic Avenue
`
`Boston, MA 02210—2206
`RGuinta—PTAB@Wolfgreenfield.com
`
`Jason M. Honeyman
`WOLF GREENFIELD & SACKS, PC.
`600 Atlantic Avenue
`
`Boston, MA 02210-2206
`
`JHoneyman—PTAB@wolfgreenfield.com
`
`WflWW
`
`
`
`Christopher C. Campbell
`
`
`
`113314025 v1
`
`
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