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`Entered: July 17, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`AMGEN INC.
`Petitioner
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`v.
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`ABBVIE BIOTECHNOLOGY LTD.
`Patent Owner
`_______________________
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`Case IPR2015-01517
`U.S. Patent No. 8,916,158
`_______________________
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`PATENT OWNER’S MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8
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`Case IPR2015-01517
`U.S. Patent No. 8,916,158
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`Pursuant to 37 C.F.R. § 42.8, Patent Owner AbbVie Biotechnology Ltd.
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`submits the following Mandatory Notices in response to the Petition for Inter
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`Partes Review of U.S. Patent No. 8,916,158 (hereinafter the “’158 patent”).
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`Real Party-In-Interest (§ 42.8(b)(1))
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`1.
`In accordance with 37 C.F.R. § 42.8(b)(1), Patent Owner identifies the real
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`party-in-interest as assignee AbbVie Biotechnology Ltd., which is owned by
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`AbbVie Inc. through AbbVie Bahamas Ltd., AbbVie Limited (Cyprus), AbbVie
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`Overseas S.à.r.l, AbbVie International S.à.r.l, AbbVie (Gibraltar) Holdings
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`Limited, and AbbVie (Gibraltar) Limited.
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`Related Matters (§ 42.8(b)(2))
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`2.
`In accordance with 37 C.F.R. § 42.8(b)(2), the ’158 patent is the subject of
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`the following judicial or administrative matters, which may affect, or be affected
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`by, a decision in this proceeding:
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`• Amgen Inc. v. AbbVie Biotechnology Ltd., Case No. IPR2015-01514
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`(P.T.A.B.), Petition for Inter Partes Review of U.S. Patent No.
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`8,916,157, dated June 26, 2015.
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`The Patent Owner is the owner of the following applications and patents that
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`claim the benefit of the priority of the filing of the ’158 patent or that the ’158
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`patent claims priority from: U.S. Patent Nos. 8,216,583, 8,795,670, 8,802,100,
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`Case IPR2015-01517
`U.S. Patent No. 8,916,158
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`8,802,101, 8,802,102, 8,911,741, 8,916,157, 8,932,591, and 8,940,305, and U.S.
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`Application Nos. 10/222,140 and 14/558,182.
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`The Patent Owner is unaware of any other pending judicial or administrative
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`matter that would affect, or be affected by, a decision in this proceeding.
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`Lead and Back-Up Counsel (§ 42.8(b)(3))
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`3.
`In accordance with 37 C.F.R. § 42.8(b)(3), Patent Owner identifies David P.
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`Frazier as lead counsel and Robert Steinberg as back-up counsel:
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`Backup Counsel
`Robert Steinberg
`Reg. No. 33,144
`Latham & Watkins LLP
`355 South Grand Avenue
`Los Angeles, CA 90071-1560
`Telephone: (213) 485-1234
`Facsimile: (213) 891-8763
`E-mail: bob.steinberg@lw.com
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`Lead Counsel
`David P. Frazier
`Reg. No. 47,576
`Latham & Watkins LLP
`555 11th Street, NW, Suite 1000
`Washington, DC 20004-1304
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`E-mail: david.frazier@lw.com
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`Service Information (§ 42.8(b)(4))
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`4.
`In accordance with 37 C.F.R. § 42.8(b)(4), Patent Owner identifies the
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`following service information:
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`Lead Counsel
`David P. Frazier
`Reg. No. 47,576
`Latham & Watkins LLP
`555 11th Street, NW, Suite 1000
`Washington, DC 20004-1304
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`E-mail: david.frazier@lw.com
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`Backup Counsel
`Robert Steinberg
`Reg. No. 33,144
`Latham & Watkins LLP
`355 South Grand Avenue
`Los Angeles, CA 90071-1560
`Telephone: (213) 485-1234
`Facsimile: (213) 891-8763
`E-mail: bob.steinberg@lw.com
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`2
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`Case IPR2015-01517
`U.S. Patent No. 8,916,158
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`Patent Owner consents to service by electronic mail at the addresses
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`identified above.
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`Dated: July 17, 2015
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`Respectfully submitted,
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`/David P. Frazier/
`David P. Frazier (Reg. No. 47,576)
`LATHAM & WATKINS LLP
`555 11th Street, NW, Suite 1000
`Washington, DC 20004 1304
`Telephone: (202) 637-2200
`Facsimile: (202) 637-2201
`
`Robert Steinberg (Reg. No. 33,144)
`LATHAM & WATKINS LLP
`355 South Grand Avenue
`Los Angeles, CA 90071-1560
`Telephone: (213) 485-1234
`Facsimile: (213) 891-8763
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`Counsel for Patent Holder
`AbbVie Biotechnology Ltd.
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`3
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`Case IPR2015-01517
`U.S. Patent No. 8,916,158
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 17th day of July 2015, true and correct copies of
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`the foregoing PATENT OWNER’S MANDATORY NOTICES UNDER 37 C.F.R.
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`§ 42.8 were served by electronic mail upon the following counsel of record for
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`Backup Counsel
`Li-Hsien Rin-Laures (Reg. No. 33,547)
`Marshall, Gerstein & Borun LLP
`6300 Willis Tower
`233 South Wacker Drive
`Chicago, IL 60606-6357
`E-mail: LRinLaures@marshallip.com
`Telephone: (312) 474-6300
`Fax: (312) 474-0448
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`/David P. Frazier/
`David P. Frazier
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`
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`Petitioner Amgen Inc.:
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`Lead Counsel
`Sandip H. Patel (Reg. No. 43,848)
`Marshall, Gerstein & Borun LLP
`6300 Willis Tower
`233 South Wacker Drive
`Chicago, IL 60606-6357
`E-mail: SPatel@marshallip.com;
`MGBECF@marshallip.com
`Telephone: (312) 474-6300
`Fax: (312) 474-0448
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