`
`Paper No. _____
`Date Filed: April 6, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`Praxair Distribution, Inc.
`Petitioner,
`v.
`INO Therapeutics LLC
`Patent Owner.
`________________
`
`Case IPR2015-00884
`U.S. Patent No. 8,291,904
`________________
`
`PATENT OWNER INO THERAPEUTIC LLC’S MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8(a)(2)
`
`
`
`Pursuant to 37 C.F.R. § 42.8, INO Therapeutics LLC (“Patent Owner”)
`
`owns U.S. Patent No. 8,291,904 by virtue of an assignment recorded at Reel/Frame
`
`No. 028383 / 0403; and submits the following Mandatory Notices.
`
`Real Party-In-Interest Under 37 C.F.R. § 42.8 (b)(1):
`
`Pursuant to the requirements of 37 C.F.R. § 42.8(b)(1), the real party-in-
`
`interest is INO Therapeutics LLC. Ikaria, Inc., an affiliate of INO Therapeutics
`
`LLC, is also a real party-in-interest.
`
`Related Matters Under 37 C.F.R. § 42.8 (b)(2):
`
`Pursuant to the requirements of 37 C.F.R. § 42.8(b)(2), INO Therapeutics
`
`LLC is aware of the following judicial or administrative matters that would affect,
`
`or be affected by, a decision in the instant proceeding:
`
`On February 19, 2015, Patent Owner filed a complaint averring that
`
`Petitioner’s Abbreviated New Drug Application (“ANDA”) infringes U.S. Patent
`
`No. 8,291,904 under 35 U.S.C. § 271(e)(2). That lawsuit is pending in the United
`
`States District Court for the District of Delaware and is captioned: INO
`
`Therapeutics LLC et al. v. Praxair Distribution, Inc. et al., Civil Action No. 1:15-
`
`cv-00170 (GMS).
`
`Contrary to Petitioner’s allegation, there are no pending continuing patent
`
`applications that claim the benefit of U.S. Patent No. 8,291,904.
`
`- 2 -
`
`
`
`Designation of Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3):
`
`Pursuant to the requirements of 37 C.F.R. § 42.8(b)(3), INO Therapeutics
`
`LLC designates Dominick A. Conde (Reg. No. 33,856) as lead counsel, and
`
`Edmund J. Haughey (Reg. No. 44,749) as back-up counsel. William E. Solander is
`
`designated as back-up counsel requiring pro hac vice admission to appear, because
`
`he is an experienced litigator and has an established familiarity with the subject
`
`matter at issue in this proceeding.
`
`A power of attorney from INO Therapeutics LLC is being submitted along
`
`with this Notice.
`
`Service Information (37 C.F.R. § 42.8(b)(4)):
`
`Pursuant to the requirements of 37 C.F.R. § 42.8(b)(4), INO Therapeutics
`
`LLC may be served by postal mailing, hand-delivery, telephone or facsimile as
`
`follows:
`
`Dominick A. Conde
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Telephone: (212) 218-2100
`Facsimile:
`(212) 218-2200
`
`INO Therapeutics LLC may be served electronically using the following e-
`
`mail addresses:
`
`- 3 -
`
`
`
`dconde@fchs.com (lead counsel)
`ehaughey@fchs.com (back-up counsel)
`wsolander@fchs.com (back-up counsel)
`
`Any questions concerning this paper may be directed to lead counsel listed
`
`below.
`
`April 6, 2015
`
`Respectfully submitted,
`
`/Dominick A. Conde/
`Dominick A. Conde (Reg. No. 33,856)
`Lead Counsel for Patent Owner
`FITZPATRICK, CELLA, HARPER & SCINTO
`Tel: (212) 218-2100
`
`Attorneys for Patent Owner,
`INO Therapeutics LLC
`
`Back-up Counsel:
`Edmund J. Haughey (Reg. No. 44,749)
`William E. Solander
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`(212) 218-2100
`
`- 4 -
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of the Patent Owner INO Therapeutics LLC’s
`
`Mandatory Notices Under 37 C.F.R. § 42.8(a)(2) was served on April 6, 2015 by
`
`causing it to be sent by email to counsel for Petitioner at the following email
`
`addresses:
`
`sanjay.murthy@klgates.com
`sara.kerrane@klgates.com
`michael.abernathy@klgates.com
`
`April 6, 2015
`
`Respectfully submitted,
`
`/Dominick A. Conde/
`Dominick A. Conde (Reg. No. 33,856)
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel: (212) 218-2100
`
`FCHS_WS 11356199v1.doc
`
`- 5 -
`
`
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