`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
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`SANOFI-AVENTIS U.S. LLC AND
`REGENERON PHARMACEUTICALS, INC.,
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`Petitioners
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`v.
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`GENENTECH, INC. AND CITY OF HOPE,
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`Patent Owners
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`Patent No. 6,331,415
`Appl. No. 07/205,419, filed June 10, 1988
`Issued: Dec. 18, 2001
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`Title: Methods of Producing Immunoglobulins, Vectors
`and Transformed Host Cells for Use Therein
`____________________
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`IPR Trial No. IPR2015-01624
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`_________________________________________________________________
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`GENENTECH, INC. AND CITY OF HOPE’S MANDATORY NOTICES
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Patent Owners Genentech, Inc. and City of Hope hereby file mandatory
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`notices pursuant to 37 C.F.R. § 42.8(a)(2).
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`A.
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`Real Parties-in-Interest (37 C.F.R. § 42.8(b)(1))
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`The real parties-in-interest are Genentech, Inc. and City of Hope.
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`B.
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`Related Matters (37 C.F.R. § 42.8(b)(2))
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`In accordance with the Office Patent Trial Practice Guide (77 Fed. Reg.
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`48,756, at 48,760 (Aug. 14, 2012)), Patent Owners identify the following U.S.
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`patent applications and issued patents that relate to U.S. Patent Application No.
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`07/205,419, which issued as U.S. Patent No. 6,331,415:
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` U.S. Patent Application No. 06/483,457, which was filed on April 8,
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`1983 and issued as U.S. Patent No. 4,816,567, is the parent
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`application of U.S. Patent Application 07/205,419;
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` U.S. Patent Application No. 08/422,187, which was filed on April 13,
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`1995 and issued as U.S. Patent No. 7,923,221, claims the benefit of
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`the priority date of U.S. Patent No. 6,331,415;
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` U.S. Patent Application No. 08/931,121, which was filed on
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`September 16, 1997 and is now abandoned, claimed the benefit of the
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`priority date of U.S. Patent No. 6,331,415; and
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` U.S. Patent Application No. 08/909,611, which was filed on August
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`12, 1997 and is now abandoned, claimed the benefit of the priority
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`date of U.S. Patent No. 6,331,415.
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`Additionally, Patent Owners identify the following matters that relate or may
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`relate to U.S. Patent Application No. 07/205,419, which issued as U.S. Patent No.
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`6,331,415:
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` U.S. Patent Application No. 07/205,419 was at issue in Patent
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`Interference No. 102,572, which has concluded;
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` U.S. Patent Application No. 07/205,419 was at issue in Genentech,
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`Inc. v. Celltech Ltd., 3:1998-cv-03926 (N.D. Cal. Oct. 9, 1998), which
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`is now closed;
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` U.S. Patent Application No. 08/422,187, which claims the benefit of
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`the priority date of U.S. Patent No. 6,331,415, was at issue in Patent
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`Interference No. 105,531, which has concluded;
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` U.S. Patent No. 6,331,415 was the subject of Reexamination Control
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`No. 90/007,542 (July 7, 2005), which has concluded;
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` U.S. Patent No. 6,331,415 was the subject of Reexamination Control
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`No. 90/007,859 (January 23, 2006), which has concluded;
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` U.S. Patent No. 6,331,415 was a patent-in-suit in Medlmmune, Inc. v.
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`Genentech, Inc., Case No. 2:03-cv-2567 MRP (C.D. Cal. Apr. 11,
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`2003), which is now closed;
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` U.S. Patent No. 6,331,415 was a patent-in-suit in Centocor, Inc. v.
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`Genentech, Inc., Case No. 2:08-cv-03573 MRP (C.D. Cal. May 30,
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`2008), which is now closed;
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` U.S. Patent No. 6,331,415 was a patent-in-suit in Glaxo Group
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`Limited v. Genentech, Inc., Case No. 2:10-cv-02764 MRP (C.D. Cal.
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`Feb. 17, 2010), which is now closed;
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` U.S. Patent No. 6,331,415 and U.S. Patent No. 7,923,221, which
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`claims the benefit of the priority date of U.S. Patent No. 6,331,415,
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`were both patents-in-suit in Human Genome Sciences, Inc. v.
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`Genentech, Inc., Case No. 2:11-cv-06519 MRP (Apr. 12, 2011), which
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`is now closed;
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` U.S. Patent No. 6,331,415 and U.S. Patent No. 7,923,221, which
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`claims the benefit of the priority date of U.S. Patent No. 6,331,415,
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`were both patents-in-suit in Genentech, Inc. v. Glaxo Group Limited,
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`Case No. 2:11-cv-03065 MRP (C.D. Cal. Apr. 12, 2011), which is now
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`closed;
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` U.S. Patent No. 6,331,415 and U.S. Patent No. 7,923,221, which
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`claims the benefit of the priority date of U.S. Patent No. 6,331,415,
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`were both patents-in-suit in Eli Lilly & Co. v. Genentech, Inc., 2:13-
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`cv-07248 MRP (C.D. Cal. Feb. 28, 2013), which is now closed;
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` U.S. Patent No. 6,331,415 and U.S. Patent No. 7,923,221, which
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`claims the benefit of the priority date of U.S. Patent No. 6,331,415,
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`were both patents-in-suit in Bristol-Myers Squibb Co. v Genentech,
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`Inc., No. 2:13-cv-05400 MRP (C.D. Cal. May 3, 2013), which is now
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`closed; and
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` U.S. Patent No. 7,923,221, which claims the benefit of the priority
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`date of U.S. Patent No. 6,331,415, is the patent-in-suit in Sanofi-
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`Aventis U.S. LLC v. Genentech, Inc., Case No. 2:15-cv-05685 GW
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`(C.D. Cal. July 27, 2015), which is pending and was commenced by
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`Petitioners in this action.
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`Patent Owners do not concede that any of the above-identified patents,
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`applications, or proceedings would affect, or be affected by, a decision in the
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`present inter partes review of U.S. Patent No. 6,331,415.
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`C.
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`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
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`Patent Owners designate the following counsel:
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`Lead Counsel: Adam R. Brausa (Reg. No. 60,287)
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`abrausa@durietangri.com
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`217 Leidesdorff Street
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`San Francisco, CA 94111
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`Ph: 415-376-6420
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`Fax: 415-236-6300
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`Back-up Counsel: Daralyn J. Durie (pro hac pending)
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`ddurie@durietangri.com
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`217 Leidesdorff Street
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`San Francisco, CA 94111
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`Ph: 415-376-6401
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`Fax: 415-236-6300
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`Powers of attorney and a motion for pro hac vice admission of Daralyn J.
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`Durie are being filed concurrently with these Mandatory Notices.
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`D.
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`Service Information (37 C.F.R. § 42.8(b)(4))
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`Please direct all correspondence regarding this proceeding to the counsel at
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`the addresses listed above. Patent Owners also consent to electronic service by
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`email to abrausa@durietangri.com and ddurie@durietangri.com
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`Respectfully Submitted,
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`DURIE TANGRI LLP
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`
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`/s/ Adam R. Brausa
`Adam R. Brausa
`Reg. No. 60,287
`Durie Tangri LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
`Tel: 415-362-6666
`Fax: 415-236-6300
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`Attorneys for Patent Owner
`Genentech, Inc.
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`5
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`By:
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`Dated: August 18, 2015
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`CERTIFICATE OF SERVICE (37 C.F.R. §§ 42.6(e))
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`The undersigned hereby certifies that the above-captioned “Genentech, Inc.
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`and City of Hope’s Mandatory Notices” was served in its entirety on August 18,
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`2015, via e-mail and Federal Express on the following business day to lead counsel
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`of record for petitioners:
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`Richard J. McCormick, (No. 55,902)
`rmccormick@mayerbrown.com
`MAYER BROWN LLP
`1221 Avenue of the Americas
`New York, NY 10020-1001
`Telephone: (212) 506-2382
`Fax: (212) 849-5682
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`Attorney for Petitioners Sanofi-Aventis U.S.
`LLC and Regeneron Pharmaceuticals, Inc.
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`/s/ Adam R. Brausa
`Adam R. Brausa
`Reg. No. 60,287
`Attorney for Patent Owners
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