`
`__________
`
`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 UPDATED MANDATORY NOTICES
`
`
`
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a), the Patent Owner submits the following
`
`updated mandatory notices. Specifically, counsel information and related
`
`proceedings information are updated.
`
`
`
`1.
`
`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). The
`
`Patent Owner has accused the Petitioner of infringing the same ʼ012
`
`Patent at issue in this IPR. On December 14, 2015, the district court
`
`stayed that case pending resolution of this IPR and IPR2015-0127.
`
`(b) Horizon Therapeutics Inc. v. Lupin Ltd. and Lupin Pharmaceuticals
`
`Inc., Civil Action No. 1:15-cv-076248-RBK-JS (D. N.J. filed Oct. 19,
`
`2015). The Patent Owner has accused Lupin of infringing the same
`
`ʼ012 Patent at issue in this IPR.
`
`(c)
`
`IPR2015-01127, petition also filed April 29, 2015, by Par
`
`Pharmaceutical, Inc., the Petitioner in this case, directed at U.S. Patent
`
`No. 8,404,215. The ʼ215 Patent is also owned by Horizon
`
`Therapeutics, Inc. and has one common inventor with the ʼ012 Patent
`
`IPR2015-01117
`
`PO Updated Mandatory Notices
`
`Page 1 of 4
`
`
`
`at issue in this case. The Board instituted trial in an Institution
`
`Decision dated November 4, 2015.
`
`(d)
`
`IPR2016-00283, petition filed December 4, 2015, by Lupin Ltd. and
`
`Lupin Pharms. Inc. (“Lupin”), also directed at the same ʼ012 Patent at
`
`issue in the present case. Lupin has filed a motion to join that IPR to
`
`the present IPR.
`
`(e)
`
`IPR2016-00284, petition filed December 4, 2015, by Lupin, directed
`
`at the ʼ215 Patent.
`
`(f) Abandoned U.S. Patent Appl. No. 14/135,318, filed on December 19,
`
`2013, claims benefit of the ʼ012 Patent.
`
`(g) Abandoned U.S. Patent Appl. No. 13/061,509, filed on June 15, 2011,
`
`claims benefit of the ʼ012 Patent.
`
`2.
`
`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), the Patent Owner provides
`
`the following designation of counsel:
`
`LEAD COUNSEL
`
`Robert Green (Reg. No. 27,555)
`Green, Griffith & Borg-Breen, LLP
`NBC Tower, Suite 3100
`455 North Cityfront Plaza
`Chicago, Illinois 60611
`Phone: (312) 883-8000
`Fax: (312) 883-8001
`rgreen@greengriffith.com
`
`IPR2015-01117
`
`PO Updated Mandatory Notices
`
`Page 2 of 4
`
`
`
`
`BACKUP 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
`
`
`Dennis Bennett (Reg. No. 34,547)
`Global Patent Group, LLC
`1005 N. Warson Road, Suite 404
`St. Louis, Missouri 63132
`Phone: (314) 812-8018
`Fax: (314)-685-2300
`dennisbennett@globalpatentgroup.com
`
`Matthew Phillips (Reg. No. 43,403)
`Renaissance IP Law Group LLP
`7327 SW Barnes Road #521
`Portland, Oregon 97223
`Phone: (503) 964-1129
`Fax: (503) 517-9919
`matthew.phillips@renaissanceiplaw.com
`
`Emer Simic (Reg. No. 61,235)
`Green, Griffith & Borg-Breen, LLP
`NBC Tower, Suite 3100
`455 North Cityfront Plaza
`Chicago, Illinois 60611
`Phone: (312) 883-8000
`Fax: (312) 883-8001
`esimic@greengriffith.com
`
`Jessica Tyrus (Reg. No. 64,742)
`Green, Griffith & Borg-Breen, LLP
`NBC Tower, Suite 3100
`
`IPR2015-01117
`
`PO Updated Mandatory Notices
`
`Page 3 of 4
`
`
`
`455 North Cityfront Plaza
`Chicago, Illinois 60611
`Phone: (312) 883-8000
`Fax: (312) 883-8001
`jtyrus@greengriffith.com
`
`
`
`
`Pursuant to 37 C.F.R. § 42.10(b), a power of attorney for lead counsel
`
`Robert Green and back-up counsel Matthew Phillips, Emer Simic, and Jessica
`
`Tyrus is concurrently filed. Backup counsel Lauren Stevens and Dennis Bennett
`
`already have power of attorney in the underlying patent.
`
`Date: 2015 Dec. 28
`
`
`
`Respectfully submitted,
`
`By: / M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`Backup Counsel for Patent Owner
`
`IPR2015-01117
`
`PO Updated Mandatory Notices
`
`Page 4 of 4
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on December 28, 2015, copies of the foregoing
`
`PATENT OWNER’S UPDATED 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@parpharm.com
`
`Sanjay K. Murthy: sanjay.murthy@klgates.com
`
`
`
`/ M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`
`
`IPR2015-01117
`
`PO Updated Mandatory Notices COS
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