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UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`SANOFI-AVENTIS U.S. LLC AND
`REGENERON PHARMACEUTICALS, INC.,
`
`Petitioners
`
`v.
`
`GENENTECH, INC. AND CITY OF HOPE,
`
`Patent Owners
`
`Patent No. 6,331,415
`Appl. No. 07/205,419, filed June 10, 1988
`Issued: Dec. 18, 2001
`
`Title: Methods of Producing Immunoglobulins, Vectors
`and Transformed Host Cells for Use Therein
`____________________
`
`IPR Trial No. IPR2015-01624
`____________________
`
`_________________________________________________________________
`
`GENENTECH, INC. AND CITY OF HOPE’S MANDATORY NOTICES
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`

`
`
`
`Patent Owners Genentech, Inc. and City of Hope hereby file mandatory
`
`notices pursuant to 37 C.F.R. § 42.8(a)(2).
`
`A.
`
`Real Parties-in-Interest (37 C.F.R. § 42.8(b)(1))
`
`The real parties-in-interest are Genentech, Inc. and City of Hope.
`
`B.
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`
`In accordance with the Office Patent Trial Practice Guide (77 Fed. Reg.
`
`48,756, at 48,760 (Aug. 14, 2012)), Patent Owners identify the following U.S.
`
`patent applications and issued patents that relate to U.S. Patent Application No.
`
`07/205,419, which issued as U.S. Patent No. 6,331,415:
`
` U.S. Patent Application No. 06/483,457, which was filed on April 8,
`
`1983 and issued as U.S. Patent No. 4,816,567, is the parent
`
`application of U.S. Patent Application 07/205,419;
`
` U.S. Patent Application No. 08/422,187, which was filed on April 13,
`
`1995 and issued as U.S. Patent No. 7,923,221, claims the benefit of
`
`the priority date of U.S. Patent No. 6,331,415;
`
` U.S. Patent Application No. 08/931,121, which was filed on
`
`September 16, 1997 and is now abandoned, claimed the benefit of the
`
`priority date of U.S. Patent No. 6,331,415; and
`
` U.S. Patent Application No. 08/909,611, which was filed on August
`
`12, 1997 and is now abandoned, claimed the benefit of the priority
`
`
`
`
`1
`
`
`
`

`
`
`
`date of U.S. Patent No. 6,331,415.
`
`Additionally, Patent Owners identify the following matters that relate or may
`
`relate to U.S. Patent Application No. 07/205,419, which issued as U.S. Patent No.
`
`6,331,415:
`
` U.S. Patent Application No. 07/205,419 was at issue in Patent
`
`Interference No. 102,572, which has concluded;
`
` U.S. Patent Application No. 07/205,419 was at issue in Genentech,
`
`Inc. v. Celltech Ltd., 3:1998-cv-03926 (N.D. Cal. Oct. 9, 1998), which
`
`is now closed;
`
` U.S. Patent Application No. 08/422,187, which claims the benefit of
`
`the priority date of U.S. Patent No. 6,331,415, was at issue in Patent
`
`Interference No. 105,531, which has concluded;
`
` U.S. Patent No. 6,331,415 was the subject of Reexamination Control
`
`No. 90/007,542 (July 7, 2005), which has concluded;
`
` U.S. Patent No. 6,331,415 was the subject of Reexamination Control
`
`No. 90/007,859 (January 23, 2006), which has concluded;
`
` U.S. Patent No. 6,331,415 was a patent-in-suit in Medlmmune, Inc. v.
`
`Genentech, Inc., Case No. 2:03-cv-2567 MRP (C.D. Cal. Apr. 11,
`
`2003), which is now closed;
`
` U.S. Patent No. 6,331,415 was a patent-in-suit in Centocor, Inc. v.
`
`
`
`
`
`2
`
`
`
`

`
`
`
`
`
`
`
`Genentech, Inc., Case No. 2:08-cv-03573 MRP (C.D. Cal. May 30,
`
`2008), which is now closed;
`
` U.S. Patent No. 6,331,415 was a patent-in-suit in Glaxo Group
`
`Limited v. Genentech, Inc., Case No. 2:10-cv-02764 MRP (C.D. Cal.
`
`Feb. 17, 2010), which is now closed;
`
` U.S. Patent No. 6,331,415 and U.S. Patent No. 7,923,221, which
`
`claims the benefit of the priority date of U.S. Patent No. 6,331,415,
`
`were both patents-in-suit in Human Genome Sciences, Inc. v.
`
`Genentech, Inc., Case No. 2:11-cv-06519 MRP (Apr. 12, 2011), which
`
`is now closed;
`
` U.S. Patent No. 6,331,415 and U.S. Patent No. 7,923,221, which
`
`claims the benefit of the priority date of U.S. Patent No. 6,331,415,
`
`were both patents-in-suit in Genentech, Inc. v. Glaxo Group Limited,
`
`Case No. 2:11-cv-03065 MRP (C.D. Cal. Apr. 12, 2011), which is now
`
`closed;
`
` U.S. Patent No. 6,331,415 and U.S. Patent No. 7,923,221, which
`
`claims the benefit of the priority date of U.S. Patent No. 6,331,415,
`
`were both patents-in-suit in Eli Lilly & Co. v. Genentech, Inc., 2:13-
`
`cv-07248 MRP (C.D. Cal. Feb. 28, 2013), which is now closed;
`
` U.S. Patent No. 6,331,415 and U.S. Patent No. 7,923,221, which
`
`3
`
`
`
`

`
`
`
`claims the benefit of the priority date of U.S. Patent No. 6,331,415,
`
`were both patents-in-suit in Bristol-Myers Squibb Co. v Genentech,
`
`Inc., No. 2:13-cv-05400 MRP (C.D. Cal. May 3, 2013), which is now
`
`closed; and
`
` U.S. Patent No. 7,923,221, which claims the benefit of the priority
`
`date of U.S. Patent No. 6,331,415, is the patent-in-suit in Sanofi-
`
`Aventis U.S. LLC v. Genentech, Inc., Case No. 2:15-cv-05685 GW
`
`(C.D. Cal. July 27, 2015), which is pending and was commenced by
`
`Petitioners in this action.
`
`Patent Owners do not concede that any of the above-identified patents,
`
`applications, or proceedings would affect, or be affected by, a decision in the
`
`present inter partes review of U.S. Patent No. 6,331,415.
`
`C.
`
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`
`Patent Owners designate the following counsel:
`
`Lead Counsel: Adam R. Brausa (Reg. No. 60,287)
`
`
`abrausa@durietangri.com
`
`
`217 Leidesdorff Street
`
`
`San Francisco, CA 94111
`
`
`Ph: 415-376-6420
`
`
`Fax: 415-236-6300
`
`Back-up Counsel: Daralyn J. Durie (pro hac pending)
`
`
`ddurie@durietangri.com
`
`
`217 Leidesdorff Street
`
`
`San Francisco, CA 94111
`
`
`Ph: 415-376-6401
`
`
`
`
`
`4
`
`
`
`

`
`
`
`
`
`Fax: 415-236-6300
`
`
`
`Powers of attorney and a motion for pro hac vice admission of Daralyn J.
`
`Durie are being filed concurrently with these Mandatory Notices.
`
`D.
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`Please direct all correspondence regarding this proceeding to the counsel at
`
`the addresses listed above. Patent Owners also consent to electronic service by
`
`email to abrausa@durietangri.com and ddurie@durietangri.com
`
`Respectfully Submitted,
`
`DURIE TANGRI LLP
`
`
`
`/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
`
`Attorneys for Patent Owner
`Genentech, Inc.
`
`5
`
`
`
`By:
`
`
`
`
`
`Dated: August 18, 2015
`
`
`
`
`
`
`
`
`
`

`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. §§ 42.6(e))
`
`The undersigned hereby certifies that the above-captioned “Genentech, Inc.
`
`and City of Hope’s Mandatory Notices” was served in its entirety on August 18,
`
`2015, via e-mail and Federal Express on the following business day to lead counsel
`
`of record for petitioners:
`
`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
`
`Attorney for Petitioners Sanofi-Aventis U.S.
`LLC and Regeneron Pharmaceuticals, Inc.
`
`/s/ Adam R. Brausa
`Adam R. Brausa
`Reg. No. 60,287
`Attorney for Patent Owners
`
`
`
`
`
`
`
`
`6

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