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`Paper No. ___
`Date Filed: May 18, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`LUPIN LIMITED
`Petitioner
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`v.
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`JANSSEN SCIENCES IRELAND UC
`Patent Owner
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`________________
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`Case IPR2015-01030
`Patent 8,518,987 B2
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`________________
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`JANSSEN SCIENCES IRELAND UC’S
`UPDATED MANDATORY NOTICES
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`Pursuant to 37 C.F.R. §42.8, Janssen Sciences Ireland UC (“Janssen”)
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`submits the following mandatory notices to update the status of related district
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`court actions disclosed in Janssen’s original mandatory notices (see Paper 6) that
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`have now been terminated.
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`REAL PARTY-IN-INTEREST
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`Janssen, an indirect, wholly-owned subsidiary of Johnson & Johnson
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`(“J&J”), is a real party-in-interest. Janssen Products, L.P., a wholly-owned
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`subsidiary of J&J is also a real party-in-interest. In addition, J&J, a publicly held
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`company, is a real party-in-interest.
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`RELATED MATTERS
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`U.S. Patent 8,518,987 (the “’987 Patent”) issued from U.S. Application No.
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`12/536,807 (the “’807 Application”). U.S. Patent Application No. 14/183,712,
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`which is currently pending before the Office, is a continuation of U.S. Application
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`13/939,494 (now abandoned), which is itself a continuation of the ’807
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`Application.
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`The ’987 Patent is being asserted in the following patent infringement
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`lawsuit:
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`2
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`• Janssen Prods., L.P. et al. v. Lupin Ltd. et al., C.A. No. 13-3891
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`(D.N.J.).
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`The ’987 Patent was at issue in the following lawsuits that have now been
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`terminated:
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`• Janssen Prods., L.P. et al. v. Teva Pharm. USA, Inc. et al., C.A. No.
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`13-7576 (D.N.J.) (terminated due to consent judgment of
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`enforceability, validity and infringement of the ’987 patent with
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`respect to Teva ANDA product);
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`• Janssen Prods., L.P. et al. v. Cipla Ltd. et al., C.A. No. 15-0307 (D.
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`Del.) (terminated due to consent judgment of enforceability, validity
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`and infringement of the ’987 patent with respect to Cipla ANDA
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`product);
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`• Janssen Prods., L.P. et al. v. Cipla Ltd. et al., C.A. No. 14-1056 (D.
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`Del.) (terminated due to consent judgment of enforceability, validity
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`and infringement of the ’987 patent with respect to Cipla ANDA
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`product);
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`• Janssen Prods., L.P. et al. v. Cipla Ltd. et al., C.A. No. 15-2549
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`(D.N.J.) (dismissed by stipulation of the parties in light of consent
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`judgment entered in the District of Delaware, C.A. No. 15-0307);
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`3
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`• Janssen Prods., L.P. et al. v. Cipla Ltd. et al., C.A. No. 14-5093
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`(D.N.J.) (dismissed by stipulation of the parties in light of consent
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`judgment entered in the District of Delaware, C.A. No. 14-1056); and
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`• Janssen Prods., L.P. et al. v. Lupin Ltd. et al., C.A. No. 14-1370
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`(D.N.J.) (terminated due to consolidation with C.A. No. 13-3891).
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`The ’807 Application is a divisional of U.S. Application No. 10/514,352,
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`which issued as U.S. Patent No. 7,700,645 (the “’645 Patent”). The ’645 Patent is
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`the subject of the following lawsuits:
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`• Janssen Prods., L.P. et al. v. Lupin Ltd. et al., C.A. No. 10-5954
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`(D.N.J.) (pending Consolidated Appeal No. 14-1842 (Fed. Cir.)); and
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`• Janssen Prods., L.P. et al. v. Lupin Ltd. et al., C.A. No. 13-3891
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`(D.N.J.) (also listed above with respect to the ’987 Patent).
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`The ’645 Patent was at issue in the following lawsuits that have now been
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`terminated:
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`• Tibotec Inc. et al. v. Teva Pharm. USA, Inc. et al., C.A. No. 11-1509
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`(D.N.J.) (consolidated with C.A. No. 10-5954 and dismissed due to
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`consent judgment of enforceability, validity and infringement of the
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`’645 patent with respect to Teva ANDA product);
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`• Tibotec Inc. et al. v. Lupin Ltd. et al., C.A. No. 11-4027 (D.N.J.)
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`(terminated due to consolidation with C.A. No. 10-5954);
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`4
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`
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`• Janssen Prods., L.P. et al. v. Cipla Ltd. et al., C.A. No. 15-0307 (D.
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`Del.) (also listed above with respect to the ’987 Patent and now
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`dismissed due to consent judgment of enforceability, validity and
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`infringement of the ’645 patent with respect to Cipla ANDA product);
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`• Janssen Prods., L.P. et al. v. Cipla Ltd. et al., C.A. No. 14-1056 (D.
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`Del.) (also listed above with respect to the ’987 Patent and now
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`dismissed due to consent judgment of enforceability, validity and
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`infringement of the ’645 patent with respect to Cipla ANDA product);
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`• Janssen Prods., L.P. et al. v. Cipla Ltd. et al., C.A. No. 15-2549
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`(D.N.J.) (also listed above with respect to the ’987 Patent and now
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`dismissed by stipulation of the parties in light of consent judgment
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`entered in the District of Delaware, C.A. No. 15-cv-0307); and
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`• Janssen Prods., L.P. et al. v. Cipla Ltd. et al.,C.A. No. 14-5093
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`(D.N.J.) (also listed above with respect to the ’987 Patent and now
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`dismissed by stipulation of the parties in light of consent judgment
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`entered in the District of Delaware, C.A. No. 14-cv-01056).
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`5
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`LEAD AND BACKUP COUNSEL
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`Lead Counsel
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`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
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`Backup Counsel
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`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
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`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
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`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
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`Gregory L. Diskant
`PATTERSON BELKNAP WEBB &
`TYLER LLP
`1133 Avenue of the Americas
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`6
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`
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`New York, NY 10036
`Tel.: (212) 336-2710
`Fax: (212) 336-2222
`gldiskant@pbwt.com
`pro hac vice to be requested
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`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney was filed with the
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`original Mandatory Notices on April 30, 2015.
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`SERVICE INFORMATION
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`Janssen may be served electronically using the following email addresses:
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`JANS-LUPIN@akingump.com
`LupinIPR@pbwt.com
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`Janssen may be served by postal mailing or hand-delivery as follows:
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`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
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`7
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`Respectfully submitted,
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`/Dianne B. Elderkin/
`Dianne B. Elderkin
`Registration No. 28,598
`Counsel for Patent Owner
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`Date: May 18, 2015
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`8
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing updated
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`mandatory notices was caused to be served on counsel for Petitioner on May 18,
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`2015, by delivering a copy via Federal Express for overnight delivery as follows:
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`Deanne M. Mazzochi
`Tara M. Raghavan
`RAKOCZY MOLINO MAZZOCHI SIWIK LLP
`6 West Hubbard Street, Suite 500
`Chicago, IL 60654
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`Date: May 18, 2015
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`Respectfully submitted,
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`By: /Dianne B. Elderkin/
`Dianne B. Elderkin
`Registration No. 28,598
`Counsel for Patent Owner
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`9
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