Paper No. ___
`Date Filed: April 30, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`LUPIN LIMITED
`Petitioner
`
`v.
`
`JANSSEN SCIENCES IRELAND UC
`Patent Owner
`
`________________
`
`Case IPR2015-01030
`Patent 8,518,987 B2
`
`________________
`
`
`JANSSEN SCIENCES IRELAND UC’S MANDATORY NOTICES
`
`
`
`
`
`Date Filed: April 30, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`LUPIN LIMITED
`Petitioner
`
`v.
`
`JANSSEN SCIENCES IRELAND UC
`Patent Owner
`
`________________
`
`Case IPR2015-01030
`Patent 8,518,987 B2
`
`________________
`
`
`JANSSEN SCIENCES IRELAND UC’S MANDATORY NOTICES
`
`
`
`
`
`
`Janssen Sciences Ireland UC submits the following mandatory disclosures
`
`pursuant to 37 C.F.R. §42.8.
`
`REAL PARTY-IN-INTEREST
`
`Janssen Sciences Ireland UC (“Janssen”), an indirect, wholly-owned
`
`subsidiary of Johnson & Johnson (“J&J”), is a real party-in-interest. Janssen
`
`Products, L.P., a wholly-owned subsidiary of J&J is also a real party-in-interest. In
`
`addition, J&J, a publicly held company, is a real party-in-interest.
`
`
`
`RELATED MATTERS
`
`U.S. Patent 8,518,987 (the “’987 Patent”) issued from U.S. Application No.
`
`12/536,807 (the “’807 Application”). U.S. Patent Application No. 14/183,712,
`
`which is currently pending before the Office, is a continuation of U.S. Application
`
`13/939,494 (now abandoned), which is itself a continuation of the ’807
`
`Application.
`
`The ’987 Patent is being asserted in the following patent infringement
`
`lawsuits:
`
`• Janssen Prods., L.P. et al. v. Lupin Ltd. et al., C.A. No. 13-3891
`
`(D.N.J.);
`
`• Janssen Prods., L.P. et al. v. Cipla Ltd. et al., C.A. No. 14-5093
`
`(D.N.J.);
`
`2
`
`
`
`• Janssen Prods., L.P. et al. v. Cipla Ltd. et al., C.A. No. 14-1056 (D.
`
`Del.);
`
`• Janssen Prods., L.P. et al. v. Cipla Ltd. et al., C.A. No. 15-0307 (D.
`
`Del.); and
`
`• Janssen Prods., L.P. et al. v. Cipla Ltd. et al., C.A. No. 15-2549
`
`(D.N.J.).
`
`The ’987 Patent was at issue in the following lawsuits that have now been
`
`terminated:
`
`• Janssen Prods., L.P. et al. v. Teva Pharm. USA, Inc. et al., C.A. No.
`
`13-7576 (D.N.J.) (terminated due to consent judgment of
`
`enforceability, validity and infringement of the ’987 patent with
`
`respect to Teva ANDA product); and
`
`• Janssen Prods., L.P. et al. v. Lupin Ltd. et al., C.A. No. 14-1370
`
`(D.N.J.) (terminated due to consolidation with C.A. No. 13-3891).
`
`The ’807 Application is a divisional of U.S. Application No. 10/514,352,
`
`which issued as U.S. Patent No. 7,700,645 (the “’645 Patent”). The ’645 Patent is
`
`the subject of the following lawsuits:
`
`• Janssen Prods., L.P. et al. v. Lupin Ltd. et al., C.A. No. 10-5954
`
`(D.N.J.) (pending Consolidated Appeal No. 14-1842 (Fed. Cir.));
`
`3
`
`
`
`• Janssen Prods., L.P. et al. v. Lupin Ltd. et al., C.A. No. 13-3891
`
`(D.N.J.) (also listed above with respect to the ’987 Patent);
`
`• Janssen Prods., L.P. et al. v. Cipla Ltd. et al., C.A. No. 14-1056 (D.
`
`Del.) (also listed above with respect to the ’987 Patent);
`
`• Janssen Prods., L.P. et al. v. Cipla Ltd. et al.,C.A. No. 14-5093
`
`(D.N.J.) (also listed above with respect to the ’987 Patent);
`
`• Janssen Prods., L.P. et al. v. Cipla Ltd. et al., C.A. No. 15-0307 (D.
`
`Del.) (also listed above with respect to the ’987 Patent); and
`
`• Janssen Prods., L.P. et al. v. Cipla Ltd. et al., C.A. No. 15-2549
`
`(D.N.J.) (also listed above with respect to the ’987 Patent).
`
`The ’645 Patent was at issue in the following lawsuits that have now been
`
`terminated:
`
`• Tibotec Inc. et al. v. Teva Pharm. USA, Inc. et al., C.A. No. 11-1509
`
`(D.N.J.) (consolidated with C.A. No. 10-5954 and dismissed due to
`
`consent judgment of enforceability, validity and infringement of the
`
`’645 patent with respect to Teva ANDA product); and
`
`• Tibotec Inc. et al. v. Lupin Ltd. et al., C.A. No. 11-4027 (D.N.J.)
`
`(terminated due to consolidation with C.A. No. 10-5954).
`
`4
`
`
`
`
`
`LEAD AND BACKUP COUNSEL
`
`Lead Counsel
`
`Dianne B. Elderkin
`AKIN GUMP STRAUSS HAUER
`& FELD LLP
`Two Commerce Square
`2001 Market Street, Suite 4100
`Philadelphia, PA 19103
`Tel.: (215) 965-1340
`Fax: (215) 965-1210
`delderkin@akingump.com
`USPTO Registration No. 28,598
`
`
`
`
`Backup Counsel
`
`
`
`Barbara L. Mullin
`AKIN GUMP STRAUSS HAUER
`& FELD LLP
`Two Commerce Square
`2001 Market Street, Suite 4100
`Philadelphia, PA 19103
`Tel.: (215) 965-1243
`Fax: (215) 965-1210
`bmullin@akingump.com
`USPTO Registration No. 38,250
`
`Ruben H. Munoz
`AKIN GUMP STRAUSS HAUER
`& FELD LLP
`Two Commerce Square
`2001 Market Street, Suite 4100
`Philadelphia, PA 19103
`Tel.: (215) 965-1263
`Fax: (215) 965-1210
`rmunoz@akingump.com
`USPTO Registration No. 66,998
`
`Irena Royzman
`PATTERSON BELKNAP WEBB &
`TYLER LLP
`1133 Avenue of the Americas
`New York, NY 10036
`Tel.: (212) 336-2081
`Fax: (212) 336-2222
`iroyzman@pbwt.com
`USPTO Registration No. 73,354
`
`Gregory L. Diskant
`PATTERSON BELKNAP WEBB &
`TYLER LLP
`1133 Avenue of the Americas
`
`5
`
`
`
`New York, NY 10036
`Tel.: (212) 336-2710
`Fax: (212) 336-2222
`gldiskant@pbwt.com
`pro hac vice to be requested
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney was filed with the
`
`original Mandatory Notices on April 30, 2015.
`
`
`
`SERVICE INFORMATION
`
`Janssen may be served electronically using the following email addresses:
`
`JANS-LUPIN@akingump.com
`LupinIPR@pbwt.com
`
`Janssen may be served by postal mailing or hand-delivery as follows:
`
`Dianne B. Elderkin
`AKIN GUMP STRAUSS HAUER & FELD LLP
`Two Commerce Square
`2001 Market Street, Suite 4100
`Philadelphia, PA 19103
`Tel.: (215) 965-1259
`Fax: (215) 965-1210
`
`Irena Royzman
`PATTERSON BELKNAP WEBB & TYLER LLP
`1133 Avenue of the Americas
`New York, NY 10036
`Tel.: (212) 336-2081
`Fax: (212) 336-2222
`
`
`
`6
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/Dianne B. Elderkin/
`Dianne B. Elderkin
`Registration No. 28,598
`Counsel for Patent Owner
`
`
`
`
`
`Date: April 30, 2015
`
`
`
`7
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing mandatory
`
`notices was caused to be served on counsel for Petitioner on April 30, 2015, by
`
`delivering a copy via Federal Express for overnight delivery as follows:
`
`Deanne M. Mazzochi
`Tara M. Raghavan
`RAKOCZY MOLINO MAZZOCHI SIWIK LLP
`6 West Hubbard Street, Suite 500
`Chicago, IL 60654
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Dianne B. Elderkin/
`Dianne B. Elderkin
`Registration No. 28,598
`Counsel for Patent Owner
`
`8
`
`Date: April 30, 2015
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
