‘ UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`Commissioner for Patents
`United States Patent and Trademark Office
`PO. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gcw
`
`SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
`PO. BOX 2938
`
`MINNEAPOLIS MN 55402
`
`In re Patent No. 7,765,107
`Issued: July 27, 2010
`Application No. 11/097,985
`Filed: April 1, 2005
`Attorney Docket No. 101 .031US4
`
`‘
`
`MAILED '
`
`FEB 0 4720ii
`
`:
`:
`:
`
`OFFICE OF PET'T'ONS
`ON PETITION
`
`This is a decision on the PETITION UNDER 37 CFR 1.182 TO CORRECT THE NAME .
`
`OF THE ASSIGNEE ON THE TERMINAL DISCLAIMER” filed November 20, 2010,
`requesting correction to the terminal disclaimer filed on February 9, 2010.
`
`The petition is DISMISSED to the extent that the Terminal Disclaimer filed February 9,
`2010 will not be removed from the record.
`
`Any request for reconsideration must be filed within TWO (2) MONTHS. This 2-month
`period is governed by 37 CFR 1.181(f) and is not extendable under 37 CFR 1.136.
`
`Application No. 11/097,651 was filed on April 1, 2005 and issued as US. Patent No.
`7,765,107 on July 27,2010.
`‘
`
`Patentees state that a terminal disclaimer was originally filed on February 9, 2010.
`However, there was a clerical error in the originally filed Terminal Disclaimer with
`respect to the identified Assignee. Patentees request that the attached replacement
`Terminal Disclaimer be entered into the Official file in lieu of the Terminal Disclaimer
`
`filed on February 9, 2010, to correct the clerical error.
`
`The Terminal Disclaimer filed February 10, 2010 (February 9, 2010 certificate of mail
`date) disclaimed, “the terminal part of the statutory term of any patent granted on the
`above-identified patent application, which would extend beyond the expiration date of
`the full statutory term, as presently shortened by any terminal disclaimers, of any patent
`issuing from US Serial No. 11/097,651. The assignee hereby agrees that any patent to
`be granted on the captioned application shall be enforceable only for and during such
`period as such patent is commonly owned with any patent issuing from US Serial No.
`11/097,651. This agreement shall run with any patent granted on the above-identified
`application and shall be binding upon the assignee's successors and assigns”.
`
`The captioned application as well as US. Application Serial No. 10/979,665 are both
`divisional applications of US Application Serial No. 10/322,348. The assignment for
`
`AMN1002
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`

`. In re Patent No. 7,765,107 '
`
`Application No. 11/097,985
`
`Page 2
`
`US. Serial No. 10/322,348 was recorded on February 19, 2010 at Reel 023962,
`Frames 0725 - 0731. That assignment assigned the application underlying U.S. Serial
`No. 10/322,348, as well as, inter alia, all continuations and divisionals based upon that
`application. The Terminal Disclaimer filed February 10, 2010 (February 9, 2010
`certificate of mail date) is signed by Bradley A. Forrest on behalf of assignee Jazz
`Pharmaceuticals, Inc.
`
`The “replacement” Terminal Disclaimer however is signed by Monique M. Perdok
`Shonka, on behalf of assignee Jazz Pharmaceuticals, Inc.
`
`The two disclaimers, list Jazz Pharmaceuticals, Inc. as the assignee and are both
`signed by individuals empowered to act on behalf of Jazz Pharmaceuticals, Inc.
`however, the difference is that in the parent application, 10/322,348, the complete chain
`of assignments was not properly recorded at the time the February 10, 2010 (February
`9, 2010 certificate of mail date) Terminal Disclaimer was filed. Applicant has now taken
`the appropriate corrective action by filing assignments from Orphan Medical, Inc. to
`Orphan Medical, LLC; from Orphan Medical, LLC to JPI Commercial, LLC; and from JPI
`Commercial, LLC to Jazz Pharmaceuticals, Inc.
`
`The difference in the two disclaimers is the reference to the assignments. A review of
`Office records confirms that the assignments have all now been recorded.
`
`Nonetheless, the Terminal Disclaimer filed February 10, 2010 (February 9, 2010
`certificate of mail date) was accepted and recorded by the examiner.
`
`Moreover, assignment data printed on the patent is based solely on the information so
`supplied on the Issue Fee Transmittal Form (PTOL-85B). A review of the record
`indicates that the Issue Fee Transmittal Form (PTOL-SSB) submitted June 10, 2010
`identified the assignee as JPI Commercial, LLC and thus, the patent properly issued to
`asSignee JPI Commercial, LLC , with a Notice that:
`
`This patent is subject to a terminal disclaimer.
`
`Thus, there is no issue as to what was dedicated to the public. Patentees do not
`request that the Terminal Disclaimer be removed or nullified. There is no error in the
`patent requiring correction. As such, this petition does not necessitate consideration of
`whether issuance of a certificate of correction is warranted.
`
`Rather, patentees request, in effect, that the Terminal Disclaimer filed February 10,
`2010 (February 9, 2010 certificate of mail date) be replaced in the record with the
`Terminal Disclaimerfiled November 2-0, 2010.
`
`The Terminal Disclaimer filed February 10, 2010 (February 9, 2010 certificate of mail
`
`AMN1002
`
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`

`

`In re Patent No. 7,765,107
`
`Application No. 11/097,985 '
`
`Page 3
`
`date) was made of record and‘considered by the examiner in examination and
`allowance of this application. Removal of the Terminal Disclaimer filed February 10,
`2010 (February 9,2010 certificate of mail date) from the application record is
`inappropriate.
`,
`
`Placement of the Terminal Disclaimer filed November 20, 2010 (along with the petition
`and petition decision) in the record is sufficient to complete the record. The Terminal
`Disclaimer filed November 20, 2010 is accepted and recorded. No further action will be
`undertaken.
`
`The petition fee of $400 has been charged to Deposit Account No. 19-0743, as
`authorized.
`_
`
`TelephoneInquiries concerning this matter should be directed to the undersigned
`itions Attorn
`at (571) 272-321
`
`
`
`
`Patricia Faison- all
`
`Senior Petitions Attorney
`Office of Petitions
`
`AMN1002
`
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`

`

`S/N 11/097:985
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`PATENT
`
`Applicants:
`
`Dayton T. Reardan et al.
`
`Examiner: Lena Najarian
`
`Serial No.:
`
`11/097,985
`
`Filed:
`
`April 1, 2005
`
`Customer No.: 21186
`
`Group Art Unit: 3686
`
`Docket No.: 101.031US4
`
`Confirmation No.: 5403
`
`Title:
`
`SENSITIVE DRUG DISTRIBUTION SYSTEM AND METHOD
`
`PETITION UNDER 37 CFR 1.182 TO CORRECT THE NAME
`
`OF THE ASSIGNEE ON THE TERMINAL DISCLAIMER
`
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 223 13— 1450
`
`Dear Sir:
`
`The undersigned, on behalf of the assignee of the above—identified application, now US.
`
`Patent No. 7,765,107, respectfully petitions to correct the name of the assignee on the Terminal
`
`Disclaimers dated February 9, 2010, which were filed during the prosecution of the ‘ 107 patent.
`
`Statement of Facts
`
`On February 9, 2010 two Terminal Disclaimers were filed during the ‘ 107 patent
`
`prosecution in the name of Orphan Medical, Inc. Upon further reView, Applicant notes that the
`
`proper assignee is Jazz Pharmaceuticals, Inc. Applicant has taken the appropriate corrective
`
`action by filing assignments from Orphan Medical, Inc. to Orphan Medical, LLC; from Orphan
`
`Medical, LLC to JPI Commercial, LLC; and from JPI Commercial, LLC to Jazz Pharmaceuticals,
`
`Inc., copies of the assignments are attached hereto.
`
`AMN1002
`
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`AMN1002
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`

`

`Page 2
`PETITION UNDER 37 CFR 1.182 TO CORRECT THE NAME OF THE ASSIGNEE ON THE TERMINAL DISCLAIMER
`Serial Number: 1 1/097,985
`Dkt: 101.031US4
`Filing Date: April 1, 2005
`Title: SENSITIVE DRUG DISTRIBUTION SYSTEM AND METHOD
`
`Reguested Relief
`
`In View of the above, Applicant respectfully requests that the Terminal Disclaimers filed
`
`herewith naming Jazz Pharmaceuticals, Inc. as the assignee replace the Terminal Disclaimers
`
`dated February 9, 2010.
`
`If necessary, please charge any additional fees or credit overpayment to Deposit Account
`
`19-0743.
`
`Respectfully submitted,
`
`SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
`PO. Box 2938
`
`Minneapolis, MN 55402
`(612) 373—6905
`
`
`Date November 19
`2010
`
`By
`
`[Monique M. Perdok Shonkag
`Monique M. Perdok Shonka
`
`Reg. No. 42,989
`
`AMN1002
`
`IPR of US. Patent No. 7,165,107
`Page 5 of 309
`
`AMN1002
`IPR of U.S. Patent No. 7,165,107
`Page 5 of 309
`
`

`

`S/N 11/097,985
`
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicants:
`
`Dayton T. Reardan et al.
`
`Examiner: Lena Najarian
`
`Serial No.:
`
`11/097,985
`
`Filed:
`
`April 1, 2005
`
`Customer No.: 21186
`
`Group Art Unit: 3686
`
`Docket No.: 101.031US4
`
`Confirmation No.: 5403
`
`Title: SENSITIVE DRUG DISTRIBUTION SYSTEM AND METHOD
`
`TERMINAL DISCLAIMER
`
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 223 13— 1450
`
`I, Monique M. Perdok Shonka, am an attorney of record for the above identified patent
`
`application as evidenced by the Power of Attorney filed in the present application on February
`
`10, 2010. This Terminal Disclaimer is submitted on behalf of Jazz Pharmaceuticals, Inc., the
`
`assignee of the present invention. As an attorney of record, I am empowered to act on behalf of
`
`the assignee and, in accordance with 37 C.F.R. § 1.321(b)(1)(iV), to sign this Terminal
`
`Disclaimer.
`
`Certificate Under 37 C.F.R. § 3.731b)
`
`The assignee, Jazz Pharmaceuticals, Inc., hereby certifies that it is the owner of the entire
`
`right, title and interest in and to: (1) the captioned application (US Application Serial No.
`
`11/097,985, now US Patent No. 7,765,107) and (2) US Patent No. 7,765,106, by virtue of the
`
`assignment executed November 16, 2010, attached hereto.
`
`The undersigned representative of the as signee has reviewed the evidentiary documents of
`
`title and certifies that to the best of assignee's knowledge and belief, title is in the assignee
`
`seeking to take the action set forth in this disclaimer.
`
`AMN1002
`
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`AMN1002
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`
`

`

`TERMINAL DISCLAIMER
`Serial Number: 1 1/097,985
`Filing Date: April 1, 2005
`Title:
`SENSITIVE DRUG DISTRIBUTION SYSTEM AND METHOD
`
`Page 2
`Dkt: 101.031US4
`
`Terminal Disclaimer
`
`The assignee of the captioned application hereby disclaims, except as provided below, the
`
`terminal part of the statutory term of any patent granted on the above—identified patent
`
`application, which would extend beyond the expiration date of the full statutory term, as
`
`presently shortened by any terminal disclaimers, of US. Patent No. 7,765,106. The assignee
`
`hereby agrees that any patent to be granted on the captioned application shall be enforceable only
`
`for and during such period as such patent is commonly owned with US. Patent No. 7,765,106.
`
`This agreement shall run with any patent granted on the above—identified application and shall be
`
`binding upon the assignee’s successors and assigns.
`
`Limitations on the Disclaimer
`
`The assignee does not disclaim any terminal part of any patent granted on the above—
`
`identified application prior to the expiration date of the full statutory term as presently shortened
`
`by any terminal disclaimer of US. Patent No. 7,765,106 in the event that it later expires before
`
`such term for failure to pay a maintenance fee, is held unenforceable, is found invalid, is
`
`statutorily disclaimed, is the subject of a reexamination certificate cancelling all claims, or is
`
`otherwise terminated prior to the expiration date of its statutory term as presently shortened by
`
`any terminal disclaimer.
`
`AMN1002
`
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`AMN1002
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`

`

`TERMINAL DISCLAIMER
`Serial Number: 1 1/097,985
`Filing Date: April 1, 2005
`Title:
`SENSITIVE DRUG DISTRIBUTION SYSTEM AND METHOD
`
`Page 3
`Dkt: 101.031US4
`
`Fee Status
`
`Please charge Deposit Account 19—0743 in the amount of $70.00 which is required under
`
`37 CPR. § 1.20(d) to file a statutory disclaimer. The Commissioner of Patents and Trademarks
`
`is hereby authorized to charge any additional fees or deficiencies, or credit any overpayments to
`
`Deposit Account No. 19—0743.
`
`Respectfully submitted,
`
`SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
`PO. Box 2938
`
`Minneapolis, MN 55402——0938
`(612) 373—6905
`
`Date November 1 9 I
`
`2 010
`
`By [Monique M. Perdok Shonkag
`Monique M. Perdok Shonka
`
`Reg. No. 42,989
`
`AMN1002
`
`IPR of US. Patent No. 7,165,107
`Page 8 of 309
`
`AMN1002
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`Page 8 of 309
`
`

`

`S/N 11/097,985
`
`PATENT
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicants:
`
`Dayton T. Reardan et al.
`
`Examiner: Lena Najarian
`
`Serial No.:
`
`11/097,985
`
`Filed:
`
`April 1, 2005
`
`Customer No.: 21186
`
`Group Art Unit: 3686
`
`Docket No.: 101.031US4
`
`Confirmation No.: 5403
`
`Title: SENSITIVE DRUG DISTRIBUTION SYSTEM AND METHOD
`
`TERMINAL DISCLAIMER
`
`Commissioner for Patents
`
`PO. Box 1450
`
`Alexandria, VA 223 13— 1450
`
`I, Monique M. Perdok Shonka, am an attorney of record for the above identified patent
`
`application as evidenced by the Power of Attorney filed in the present application on February
`
`10, 2010. This Terminal Disclaimer is submitted on behalf of Jazz Pharmaceuticals, Inc., the
`
`assignee of the present invention. As an attorney of record, I am empowered to act on behalf of
`
`the assignee and, in accordance with 37 C.F.R. § 1.321(b)(1)(iV), to sign this Terminal
`
`Disclaimer.
`
`Certificate Under 37 C.F.R. § 3.731b)
`
`The assignee, Jazz Pharmaceuticals, Inc., hereby certifies that it is the owner of the entire
`
`right, title and interest in and to: (1) the captioned application (US Application Serial No.
`
`11/097,985, now US Patent No. 7,765,107) and (2) US Patent No. 7,797,171, by virtue of the
`
`assignment executed on November 16, 2010, attached hereto.
`
`The undersigned representative of the as signee has reviewed the evidentiary documents of
`
`title and certifies that to the best of assignee's knowledge and belief, title is in the assignee
`
`seeking to take the action set forth in this disclaimer.
`
`AMN1002
`
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`Page 9 of 309
`
`AMN1002
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`Page 9 of 309
`
`

`

`TERMINAL DISCLAIMER
`Serial Number: 1 1/097,985
`Filing Date: April 1, 2005
`Title:
`SENSITIVE DRUG DISTRIBUTION SYSTEM AND METHOD
`
`Page 2
`Dkt: 101.031US4
`
`Terminal Disclaimer
`
`The assignee of the captioned application hereby disclaims, except as provided below, the
`
`terminal part of the statutory term of any patent granted on the above—identified patent
`
`application, which would extend beyond the expiration date of the full statutory term, as
`
`presently shortened by any terminal disclaimers, of US. Patent No. 7,797,171. The assignee
`
`hereby agrees that any patent to be granted on the captioned application shall be enforceable only
`
`for and during such period as such patent is commonly owned with US. Patent No. 7,797,171.
`
`This agreement shall run with any patent granted on the above—identified application and shall be
`
`binding upon the assignee’s successors and assigns.
`
`Limitations on the Disclaimer
`
`The assignee does not disclaim any terminal part of any patent granted on the above—
`
`identified application prior to the expiration date of the full statutory term as presently shortened
`
`by any terminal disclaimer of US. Patent No. 7,797,171 in the event that it later expires before
`
`such term for failure to pay a maintenance fee, is held unenforceable, is found invalid, is
`
`statutorily disclaimed, is the subject of a reexamination certificate cancelling all claims, or is
`
`otherwise terminated prior to the expiration date of its statutory term as presently shortened by
`
`any terminal disclaimer.
`
`AMN1002
`
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`Page 10 of 309
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`AMN1002
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`Page 10 of 309
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`

`

`TERMINAL DISCLAIMER
`Serial Number: 1 1/097,985
`Filing Date: April 1, 2005
`Title:
`SENSITIVE DRUG DISTRIBUTION SYSTEM AND METHOD
`
`Page 3
`Dkt: 101.031US4
`
`Fee Status
`
`Please charge Deposit Account 19—0743 in the amount of $70.00 which is required under
`
`37 CPR. § 1.20(d) to file a statutory disclaimer. The Commissioner of Patents and Trademarks
`
`is hereby authorized to charge any additional fees or deficiencies, or credit any overpayments to
`
`Deposit Account No. 19—0743.
`
`Respectfully submitted,
`
`SCHWEGMAN, LUNDBERG & WOESSNER, P.A.
`PO. Box 2938
`
`Minneapolis, MN 55402——0938
`(612) 373—6905
`
`Date November 1 9 ,
`
`2 010
`
`By /Monigue M. Perdok Shonka/
`Monique M. Perdok Shonka
`
`Reg. No. 42,989
`
`AMN1002
`
`IPR of US. Patent No. 7,165,107
`Page 11 of 309
`
`AMN1002
`IPR of U.S. Patent No. 7,165,107
`Page 11 of 309
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`

`

`SIN 11/097,985
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`Dayton T. Reardan et a1.
`Examiner: Lena Najarian
`Applicant:
`11/097,985
`Group Art Unit: 3686
`Serial No:
`April 1, 2005
`Docket: 101.031US4
`Filed:
`Customer N0.
`21 186
`
`Title:
`SENSITEVE DRUG DISTRIBUTION SYSTEM AND METHOD
`
`PATENT
`
`POWER OF ATTORNEY
`
`CERTIFICATE UNDER 37 CFR § 3.731b!
`
`Commissioner for Patents
`PO. Box 1450
`
`Alexandria, VA 223134450
`
`In accordance with 37 C.F.R. § 1.36, M.P.E.P. §§ 402.05 and 402.07, please appoint the
`
`following attorneys and/or patent agents to prosecute this application and to transact all business
`
`in the Patent and Trademark Office in connection therewith:
`
`Customer Number: 21186
`
`CERTIFICATE UNDER 37 CFR § 3.73gb)
`
`Jazz Pharmaceuticals, Inc. hereby certifies that it is the assignee of the entire right, title
`
`and interest in the patent application identified above by virtue of the assignments attached
`
`herewith. To the best of my knowledge and belief, title is in Jazz Pharmaceuticals, Inc, the
`
`assignee
`
`Pursuant to 37 C F.R. § 3. 73(b) i hereby declare that I am empowered to sign this
`
`certificate on behalf of Jazz Pharmaceuticals, Inc, the assignee.
`
`I hereby declare that all statements made herein of my own knowledge are true, and that
`
`all statements made on information and belief are believed to be true.
`
`Please direct ali correspondence in this case to:
`
`Schwegman, Lundberg & Woessner, PA.
`Customer No. 21186
`
`Date
`
`[Mb/$10“)
`
`1 Li é Zé
`By
`
`Name:CarolGamble
`Title: (2W. MU
`
`AMN1002
`
`IPR of US. Patent No. 7,165,107
`Page 12 of 309
`
`AMN1002
`IPR of U.S. Patent No. 7,165,107
`Page 12 of 309
`
`

`

`11/12/10
`14:16 FAX 6123393061
`SCHWEGMAN.LUNDBERG.WOES
`@001
`
`******$*$**$*$*$*$**$
`
`
`an“:
`TX REPORT
`an“:
`********$*$****$*****
`
`TRANSMISSION OK
`
`3098
`
`TX/RX NO
`CONNECTION TEL
`SUBADDRESS
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`ST. TIME
`11/12 14:15
`USAGE T
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`10
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`0K RESULT
`
`
`
`
`
`
`
`SCHWEGMAN- LUNDBERG IWOESSNER
`PATENT PROTECTION FOR HIGH TECHNOLOGY
`
`PL). Box 2938
`
`Minneapolis, MN 55402
`Telephone (612) 373-6900
`Facsimile (612) 339-3061
`
`I}
`Novem ber }, 2010
`
`Time:
`
`.' '5 @111
`l
`(Minneapolis, Minn.)
`
`TO:
`
`Commissioner for Patents
`Ann: Assignment Recordation Sewices
`Patent Examining Corps
`Facsimile Center
`
`PO. Box 1450
`
`Alexandria, VA 22313-1450
`
`FAX NUMBER 571-273-0140
`
`*Plcase deliver to Assignment Recordation Services*
`
`FROM: Moniguc M. Perdok Shonka
`
`DOCument(s) Transmitted: Agreement and Plan of Merger (7 pgs.), Appendix A (1 pg.),
`Recordation Form Cover Sheet (1 pg), Authorization to charge Deposit Account 19-0743 in the
`amount of $400.00 to cover the recordation fee.
`
`Total pages of this transmission, including cover letter: 3
`
`if you do NOT receive all of the pages described above, please telephone us at 612-373—6900 or fax us at
`612-339-3061.
`
`Please charge any additional fees or credit overpayment to Deposit Account No. 19-0743.
`
`/002
`JJ‘MyI
`By: L” .
`Name: Monifpieé‘fluisfi'lfi'fiifnfimlm 65,107
`Page 13 of 309
`
`AMN1002
`IPR of U.S. Patent No. 7,165,107
`Page 13 of 309
`
`

`

`SLW SCHWEGMAN - LUNDBERG "WOESSNER
`
`PATENT PROTECTiON FOR HIGH TECHNOLOGY
`
`PO. Box 2938
`
`Minneapolis. MN 55402
`Telephone (612) 373-6900
`Facsimile (612) 339-3061
`
`I}
`November}, 2010
`
`Time:
`
`.' l5 QM
`I
`(Minneapolis, Minn.)
`
`TO:
`
`Commissioner for Patents
`Attn: Assignment Recordation Services
`Patent Examining Corps
`Facsimile Center
`PO. Box 1450
`
`Alexandria, VA 22313—1450
`
`FAX NUMBER 571-273-0140
`
`*Please deliver to Assignment Recordation Services*
`
`FROM: Monigue M. Perdok Shonka
`
`Document(s) Transmitted: Agreement and Plan of Merger (7 pgs.), Appendix A (1 pg.),
`Recordation Form Cover Sheet (1 pg.), Authorization to charge Deposit Account 19-0743 in the
`amount of $400.00 to cover the recordation fee.
`
`Total pages ofthis transmission, including cover letter:
`
`10
`
`If you do NOT receive all of the pages described above, please telephone us at 612-373-6900 or fax us at
`612-339-3061.
`
`Please charge any additional fees or credit overpayment to Deposit Account No. 19-0743.
`
`4111904“ng /
`all '
`By:
`Name: Monique M. Perdok Shonka
`USPTO Reg. No. 42,989
`
`I here y certify that this paper is being transmitted by facsimile to the US. Patent and Trademark Office on the date shown below.
`
`,ac
`
`//’/9—’/[§
`Date of Transmission
`
`AMN1002
`
`IPR of US. Patent No. 7,165,107
`Page 14 of 309
`
`\ ’
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`RECORDATION FORM COVER SHEET
`PATENTS ONLY
`
`Atty Ref/Docket No.: 101 .000001
`
`Patent and Trademark Office
`
`To the Director of the US. Patent and TrademarE Office: Please record the attached original documents or copy thereof.
`2. Name and address of receiving party(ies):
`
`1. Name of conveying party(ies):
`
`Orphan Medical. Inc.
`
`Additional name(s) ofconveying party(ies) attached?
`
`[ ]Yes [X]No
`
`3. Nature of conveyance:
`
`[
`
`[
`
`[
`
`] Assignment
`
`[X] Merger
`
`] Security Agreement [
`
`] Change ofName
`
`] Other
`
`Name: Orphan Medical. LLC
`
`Street Address: 3 180 Porter Drive
`
`
`Zip: 94304
`State: CA
`City: Palo Alto
`Country: United States ofimerica
`
`Additional name(s) & address(es) attached? [ ]Yes [X]No
`
`
`Execution Date: March 14 2008
`__—__—_____—____—_—__—___—-—-———-——————-—————
`
`4. Application number(s) or patent number(s):
`
`If this document is being filed together with a new application, the execution date of the application is:
`
`A. Patent Application No.(s)
`
`B. Patent No.(s)
`
`Additional numbers attached? [X]Yes [ ]No
`
`See Attached Appendix
`
`5. Name and address of party to whom correspondence
`concerning document should be mailed:
`
`7. Total fee (37 CFR 3.41 ):$ 400.00
`
`6. Total number of applications and patents involved: i
`
`[]Enclosed
`Name: Monigue M. Perdok Shonka
`[X]Authorized to be charged to deposit account
`A(1dress:
`19'074"
`Schwegman, Lundberg & Woessner, P.A.
`8. Please charge any additional fees or credit any over
`PO BOX 2938
`payments to our Deposit Account No.: 19-0743
`Minneapolis, MN 55402--0938
`
`
`DO NOT USE THIS SPACE
`
`9. Statement and signature.
`To the best of my knowledge and belief, the foregoing information is true and correct and any attached copy is a true copy
`of the original document.
`
`Monigue M. Perdok Shonka/Reg. No. 42,989 / M9": '3’: J’l Po’ldukylmii/
`
`Name of Person Signing
`
`Signature
`
`November 12 I 2010
`
`Date
`
`Total number of pages including cover sheet: 10
`
`Mail documents to be recorded with required cover sheet information to:
`Commissioner of Patents and Trademarks
`
`Mail Stop Assignment Recordation Services
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`AMN1002
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`
`Appendlx A
`
`Serial No.
`09/470,570
`
`10/194,021
`10/84L709
`
`Filing Date. QM lisyLQLte
`Dec 22, 1999
`6,472,431
`Oct 29, 2002
`
`Jul 11, 2002
`IlWay7,2004
`
`6,780,889
`7262219
`
`Aug 24, 2004
`Aug28,2007
`
`11/7775877
`
`Jul13,2007
`
`12/913,644
`
`Oct 27, 2010
`
`10/322,348
`
`Dec 17, 2002
`
`7,668,730
`
`Feb 23, 2010
`
`10/979665
`
`Nov2,2004
`
`7765406
`
`nuz7,2010
`
`- 11/097651
`11/097985
`
`Apr1,2005
`Apr1,2005
`
`7797171
`Z765AD7
`
`5ep14,2010
`Jui:7,2o10
`
`12/704,097
`
`Feb 11, '2010
`
`I
`
`This aSSignment applies to any continuation, divisional or
`
`continuation—in—part of any listed application.
`
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`AGREEMENT AND PLAN OF MERGER
`
`This Agreement and Plan of Merger (this “Agreement”) is made and entered into as of
`March 14, 2008 by and between ORPHAN MEDICAL, LLC, a Delaware limited liability company
`(“Orphan LLC”), and ORPHAN MEDICAL, INC., a Delaware corporation (“Orphan Ina”).
`
`RECITALS
`
`is a corporation organized under and governed by the laws of the
`Orphan Inc.
`A.
`State of Delaware and a wholly-owned subsidiary of Jazz Pharmaceuticals, Inc., a Delaware
`corporation (“Jazz”). Orphan Inc. has authorized capital stock of 100 shares of Common Stock
`(the “Common Stock”). As of the date of this Agreement, Orphan Inc. has 100 shares of Common
`Stock issued and outstanding.
`
`The Board of Directors of Orphan Inc. has determined that it is advisable and in the
`B.
`-
`best interests of Orphan Inc. and its sole stockholder that Orphan Inc. be merged with and into
`Orphan LLC pursuant to the terms and conditions herein provided (the “Merger” .
`
`The managers of Orphan LLC have determined that the Merger is advisable and in
`C.
`the best interests of Orphan LLC.
`
`W
`
`NOW, THEREFORE, in consideration of the mutual agreements and covenants set
`forth herein, Orphan Inc. and Orphan LLC hereby agree, subject to the terms and conditions -
`hereafter set forth, as follows:
`
`SECTION 1. MERGER
`
`1.1 Merger. Upon the terms and subject to the conditions set forth in this Agreement
`and in accordance with the Delaware Limited Liability Company Act (the “DLLCA”) and the
`Delaware General Corporation Law (the “DGCL”), at
`the Effective Time (as defined in
`Section 1.3), Orphan Inc. shall be merged with and into Orphan LLC, and the separate existence
`of Orphan Inc. shall cease. Orphan LLC will continue as the surviving company in the Merger
`(the “Surviving Company”).
`
`Effect of the Merger. The Merger shall have the effects set forth in this
`1.2
`Agreement and in the applicable provisions of the DLLCA and the DGCL.
`
`Effective Time. As soon as practicable after the satisfaction or waiver of the
`1.3
`conditions set forth in Section 1.7, Orphan Inc. and Orphan LLC shall cause a properly executed
`certificate of merger conforming to the requirements of the DLLCA (the “Certificate of
`Merger”) to be filed with the Secretary of State of the State of Delaware. The Merger shall
`become effective at the time the Certificate of Merger is filed with the Secretary of State of the
`State of Delaware, or at such later time as is agreed to by the parties hereto and specified in the
`Certificate of Merger (the time at which the Merger becomes effective being referred to in this
`
`699333 v2/HN
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`time) or such other
`(Pacific daylight
`the “Effective Time"). At 9:30 am.
`Agreement as
`practicable time on the date on which the Certificate of Merger is to be so filed, a closing shall be
`held at the offices of Cooley Godward Kronish LLP, 3175 Hanover Street, Palo Alto, California
`(or such other place or time as Orphan Inc. and Orphan LLC may jointly designate) for the
`purpose of confirming the satisfaction or waiver of each of the conditions set forth in Section 1.7.
`
`Organizational Documents; Member; Manager; Interests. As of the Effective
`1.4
`Time: (a) the Certificate of Formation of Orphan LLC as in effect immediately prior to the
`Effective Time shall continue to be the certificate of formation of the Surviving Company; (b)
`the operating agreement of Orphan LLC as in effect immediately prior to the Effective Time
`shall continue to be the operating agreement of the Surviving Company; (6) Jazz shall be the sole
`_ member of the Surviving Company and the managers of Orphan LLC immediately prior to the
`Effective Time shall continue to be the managers of the Surviving Company until as otherwise
`provided by law or the operating agreement of the Surviving Company; and (d) the outstanding
`limited liability company interests of the Surviving Company shall remain outstanding and are
`not affected by the Merger.
`
`Cancellation of Common Stock. At the Effective Time, by virtue of the Merger
`1.5
`and without any action on the part of the sole stockholder of Orphan Inc., each share of Common
`Stock outstanding immediately prior to the Effective Time shall be cancelled and extinguished
`without the payment of any additional consideration (whether in the form of cash, securities or
`otherwise) by Orphan LLC.
`
`Orphan Inc. Share Transfer Books Closed. At the Effective Time, the holder
`1.6
`of shares of Common Stock outstanding immediately prior to the Effective Time shall cease to
`have any rights as the stockholder of Orphan Inc., and the stock transfer books of Orphan Inc.
`shall be closed with respect to all such shares of Common Stock. No further transfer of any such
`shares of Common Stock shall be made on such stock transfer books afier the Effective Time.
`
`Conditions to Merger. The obligation of Orphan Inc. and Orphan LLC to effect
`1.7
`the Merger is subject to satisfaction of the following conditions (any or all of which may be
`waived by Orphan LLC in its sole discretion to the extent permitted by law):
`
`the Merger shall have been approved by the sole stockholder of Orphan
`(a)
`Inc. in accordance with applicable provisions of the DGCL; and
`
`any and all consents, permits, authorizations, approvals, and orders
`(b)
`deemed in the sole discretion of Orphan LLC to be material to consummation of the Merger shall
`have been obtained.
`
`SECTION 2. MISCELLANEOUS Pnovrsrons
`
`Further Assurances. Each party hereto shall execute and cause to be delivered
`2.1
`to each other party hereto such instruments and other documents, and shall take such other
`actions, as such other party may reasonably request for the purpose of carrying out or evidencing
`any of the transactions contemplated by this Agreement.
`
`699333 VZ/HN
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`'
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`2
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`This Agreement shall be construed and interpreted in
`Governing Law.
`2.2
`accordance with the laws of the State of Delaware, without regard to its provisions concerning
`conflict of laws that would cause the laws of another jurisdiction to govern.
`
`Counterparts. This Agreement may be executed in two or more counterparts,
`2.3
`each of which shall be binding as of the date first written above, and all of which shall constitute
`one and the same instrument. Each such copy shall be deemed an original, and it shall not be
`necessary in making proof of this Agreement to produce or account for more than one such
`counterpart.
`
`Severability. Any provision of this Agreement that is invalid or unenforceable in
`2.4
`any jurisdiction shall be ineffective to the extent of such invalidity or unenforceability without
`invalidating or rendering unenforceable the remaining provisions hereof, and any such invalidity
`or unenforceability in any jurisdiction shall not invalidate or render unenforceable such provision
`in any other jurisdiction.
`
`Successors and Assigns. This Agreement shall inure to the benefit of, and be
`2.5
`binding upon, each of the parties hereto and each of their respective successors and assigns.
`
`Entire Agreement. This Agreement sets forth the entire understanding of the
`2.6
`parties hereto relating to the subject matter hereof and supersedes all prior agreements and
`understandings among or between any of the parties relating to the subject matter.
`
`[Signature Page Follows]
`
`699333 v2/H‘N
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`IN WITNESS WHEREOF, the undersigned have caused this Agreement to be executed
`effective as of the date first written above.
`
`Orphan Medical, Inc.
`
`Name:
`
`arol A. Gambl
`
`Title:
`
`Secretary
`
`Orphan Medical, LLC
`
`By:
`Name: Carol A. Gambl
`
`Title: Manager
`
`699333 v2/HN
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`@daware
`
`
`
`1
`
`‘Zfie first State
`
`I, HARRIET SMITH WINDSOR, SECRETARY OF STATE OF THE STATE OF
`
`DELAWARE, DO HEREBY CERTIFY THE ATTACHED IS A TRUE AND CORRECT
`
`COPY OF THE CERTIFICATE OF MERGER, WHICH MERGES:
`
`"ORPHAN MEDICAL,
`
`INC. ", A DELAWARE CORPORATION,
`
`WITH AND INTO "ORPHAN MEDICAL, LLC" UNDER THE NAME OF
`
`"ORPHAN MEDICAL, LLC", A LIMITED LIABILITY COMPANY ORGANIZED AND
`
`EXISTING UNDER THE LAWS OF THE STATE OF DELAWARE, AS RECEIVED
`
`AND FILED IN THIS OFFICE THE FOURTEENTH DAY OF MARCH, A.D. 2008,
`
`AT 3:08 O'CLOCK P.M.
`
`A FILED COPY OF THIS CERTIFICATE HAS BEEN FORWARDED TO THE
`
`NEW CASTLE COUNTY RECORDER OF DEEDS.
`
`8100M 080319856
`
`451 7425
`
`You may verify this certificate online
`at cozp. dalaware . gov/authver