UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`
`
`
`PAR PHARMACEUTICAL, INC.,
`Petitioner
`
`v.
`
`HYPERION THERAPEUTICS, INC.,
`Patent Owner
`
`__________
`
`
`
`Case IPR2015-01117
`Patent 8,642,012
`
`__________
`
`
`
`PATENT OWNER’S INITIAL MANDATORY NOTICES
`
`
`
`
`
`
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`
`
`
`PAR PHARMACEUTICAL, INC.,
`Petitioner
`
`v.
`
`HYPERION THERAPEUTICS, INC.,
`Patent Owner
`
`__________
`
`
`
`Case IPR2015-01117
`Patent 8,642,012
`
`__________
`
`
`
`PATENT OWNER’S INITIAL MANDATORY NOTICES
`
`
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a), the Patent Owner submits the following
`
`Mandatory Notices.
`
`
`
`1.
`
`Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`U.S. Patent No. 8,642,012 was owned by Hyperion Therapeutics, Inc., but as
`
`a result of the acquisition of Hyperion Therapeutics, Inc. by Horizon Pharma plc,
`
`effective May 7, 2015, the name of Hyperion Therapeutics, Inc., was changed to
`
`Horizon Therapeutics, Inc., as evidenced by name change documentation recorded
`
`with the United States Patent and Trademark Office on May 14, 2015 at Reel
`
`035638, Frame 0305. Accordingly, Horizon Therapeutics, Inc. (f/k/a Hyperion
`
`Therapeutics, Inc.), a corporation organized and existing under the laws of the
`
`State of Delaware, having its principal place of business at 520 Lake Cook Road,
`
`Suite 520, Deerfield, Illinois, 60015, is the Patent Owner of U.S. Patent No.
`
`8,642,012.
`
`Pursuant to the requirements of 37 C.F.R. § 42.8(b)(1), the undersigned state
`
`that the real parties-in-interest are Horizon Therapeutics, Inc., as well its corporate
`
`parents (collectively, Horizon):
`
`Horizon Pharma, Inc., a corporation organized and existing under the laws
`
`of the State of Delaware having its principal place of business at 520 Lake Cook
`
`Road, Suite 520, Deerfield, Illinois, 60015, which is wholly owned by;
`
`IPR2015-01117
`
`PO Init. Mand. Notices
`
`Page 2 of 6
`
`
`
`Horizon Pharma Finance S.á r.l., an entity organized and existing under the
`
`laws of Luxembourg, having its principal place of business at 19 Rue de Bitbourg,
`
`Luxembourg, which is wholly owned by;
`
`Horizon Pharma Capital Limited, a corporation organized and existing under
`
`the laws of Ireland, having its principal place of business at Connaught House, 1st
`
`Floor, 1 Burlington Road, Dublin 4, Ireland, which is wholly owned by;
`
`Horizon Pharma Holdings Limited, a corporation organized and existing
`
`under the laws of Ireland, having its principal place of business at Connaught
`
`House, 1st Floor, 1 Burlington Road, Dublin 4, Ireland, which is wholly owned by;
`
`and
`
`Horizon Pharma plc, a corporation organized and existing under the laws of
`
`Ireland, having its principal place of business at Connaught House, 1st Floor, 1
`
`Burlington Road, Dublin 4, Ireland.
`
`
`
`2.
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The following judicial and administrative matters may affect or be affected
`
`by a decision in this proceeding:
`
`(a) Hyperion Therapeutics Inc. v. Par Pharmaceutical, Inc., Civil Action
`
`No. 2:14-CV-384-JRG-RSP (E.D. Tex.). Filed April 23, 2014.
`
`(b)
`
`IPR2015-01127, petition also filed April 29, 2015, by Par
`
`Pharmaceutical, Inc., the Petitioner in this case, directed at U.S. Patent
`
`IPR2015-01117
`
`PO Init. Mand. Notices
`
`Page 3 of 6
`
`
`
`No. 8,404,215. The ʼ215 Patent is also owned by Horizon
`
`Therapeutics, Inc. and has one common inventor with the ʼ012 Patent
`
`at issue in this case.
`
`(c) U.S. Patent Appln. No. 14/135,318 filed on December 19, 2013, now
`
`abandoned; and U.S. Patent Appln. No. 13/061,509 filed on June 15,
`
`2011, now abandoned.
`
`3.
`
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`
`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), Patent Owner provides the
`
`following designation of counsel:
`
`Lead Counsel:
`
`Lauren Stevens (Reg. No. 36,691)
`Global Patent Group, LLC
`1005 N. Warson Road, Suite 404
`St. Louis, Missouri 63132
`Phone: (650) 387-3813
`Fax: (314)-685-2300
`lstevens@globalpatentgroup.com
`
`Back-up Counsel:
`
`Matthew Phillips (Reg. No. 43,403)
`Renaissance IP Law Group LLP
`9600 S.W. Oak Street, Suite 560
`Portland, Oregon 97223
`Phone: (503) 964-1129
`Fax: (503) 517-9919
`matthew.phillips@renaissanceiplaw.com
`
`
`
`
`Pursuant to 37 C.F.R. § 42.10(b), a power of attorney for the back-up
`
`counsel is filed concurrently. Lead counsel already has power of attorney in the
`
`underlying patent.
`
`
`
`
`
`4.
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`Service of any documents may be made at the email addresses for the lead
`
`and back-up counsel designated above. If physical delivery is necessary, such
`
`IPR2015-01117
`
`PO Init. Mand. Notices
`
`Page 4 of 6
`
`
`
`service may be made at the postal addresses for the lead and back-up counsel
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`designated above with a courtesy notification to each of their respective email
`
`addresses at the time of sending.
`
`5.
`
`Payment of Fees under 37 C.F.R. § 42.103
`
`The undersigned authorizes the U.S. Patent and Trademark Office to charge
`
`any applicable fees associated with this proceeding to Deposit Account No. 50-
`
`4297.
`
`Date: 2015 May 20
`
`Lauren Stevens
`Reg. No. 36,691
`
`Lead Counsel for Patent Owner
`
`Global Patent Group, LLC
`1005 N. Warson Road, Suite 404
`St. Louis, Missouri 63132
`Phone: (650) 387-3813
`Fax: (314)-685-2300
`lstevens@globalpatentgroup.com
`
`Respectfully submitted,
`
`By: / M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`
`Matthew Phillips
`Reg. No. 43,403
`
`Backup Counsel for Patent Owner
`
`Renaissance IP Law Group LLP
`9600 S.W. Oak Street, Suite 560
`Portland, Oregon 97223
`Phone: (503) 964-1129
`Fax: (503) 517-9919
`matthew.phillips@renaissanceiplaw.com
`
`
`
`
`IPR2015-01117
`
`PO Init. Mand. Notices
`
`Page 5 of 6
`
`
`
`
`
`
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`CERTIFICATE OF SERVICE
`
`I hereby certify that on May 20, 2015, copies of the foregoing PATENT
`
`OWNER’S INITIAL MANDATORY NOTICES and all documents filed with it
`
`were served via electronic mail, as agreed to by counsel, upon the following
`
`counsel for the Petitioner:
`
`Michael J. Freno: michael.freno@klgates.com
`
`David H. Silverstein: david.silverstein@parpharma.com
`
`Sanjay K. Murthy: sanjay.murthy@klgates.com
`
`
`
`/ M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`
`
`IPR2015-01117
`
`PO Init. Mand. Notices
`
`Page 6 of 6
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