throbber
Paper _____
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`STEADYMED LTD.
`Petitioner
`
`v.
`
`UNITED THERAPEUTICS CORPORATION
`Patent Owner
`
`U.S. Patent No. 8,497,393
`Issue Date: Jul. 30, 2013
`Title: PROCESS TO PREPARE TREPROSTINIL, THE ACTIVE
`INGREDIENT IN REMODULIN®
`_______________
`
`Case IPR2016-00006
`_______________
`
`
`
`
`
`Patent Owner’s Mandatory Notices
`37 C.F.R. § 42.8
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`4851-2470-5065.1
`
`

`
`IPR2016-00006
`Patent 8,497,393
`
`
`Patent Owner Docket No. 080618-1601
`
`
`
` Patent Owner hereby files its Mandatory Notices under 37 C.F.R. § 42.8(a)(2).
`
`The Notices are being timely filed within 21 days of service of the Petition, which
`
`was served on Oct. 2, 2015.1
`
`REAL PARTY-IN-INTEREST
`
`United Therapeutics Corp. is the assignee of US Patent No. 8,497,393 (“the
`
`’393 patent”) based on a recorded assignment.
`
`RELATED MATTERS
`
`Patent Owner has asserted the ’393 patent in the following civil actions filed in
`
`the District Court of New Jersey:
`
`(a) United Therapeutics Corp. v. Sandoz, Inc., Civ. No. 14-cv-05499;
`
`(b) United Therapeutics Corp. v. Teva Pharmaceuticals, U.S.A., Inc., Civ. No.
`
`14-cv-05498; and
`
`(c) United Therapeutics Corp. v. Watson Laboratories, Inc., Civ. No. 15-cv-
`
`05723.
`
`
`
`1 The certificate of service attached to the petition incorrectly indicates a service
`
`date of Oct. 1, 2015. The actual date of mailing by express mail is Oct. 2, 2015, as
`
`indicated in Petitioner’s cover letter and express mail packaging.
`
`4851-2470-5065.1
`
`2
`
`

`
`IPR2016-00006
`Patent 8,497,393
`
`
`Patent Owner Docket No. 080618-1601
`
`
`
`In addition, US Patent Application Ser. Nos. 14/754,932 and 14/849,981,
`
`claiming priority to the ’393 patent, are currently pending.
`
`LEAD AND BACKUP COUNSEL
`
`Lead Counsel:
`
`Stephen B. Maebius
`Foley & Lardner LLP
`3000 K St., NW., Suite 600
`Washington, DC 20007
`Direct Line: 202-672-5569
`Email: smaebius@foley.com
`Fax: 202-672-5399
`USPTO Reg. No. 35,264
`
`Backup Counsel:
`
`
`
`George Quillin
`Foley & Lardner LLP
`3000 K St., NW., Suite 600
`Washington, DC 20007
`Direct Line: 202-672-5413
`Email: gquillin@foley.com
`Fax: 202-672-5399
`USPTO Reg. No. 32,792
`
`Shaun R. Snader
`United Therapeutics Corp.
`1735 Connecticut Ave., NW, 2nd Floor
`Washington, DC 20009
`Direct Line: 202-304-1701
`Email: ssnader@unither.com
`USPTO Reg. No. 59,987
`
`4851-2470-5065.1
`
`3
`
`

`
`IPR2016-00006
`Patent 8,497,393
`
`
`Patent Owner Docket No. 080618-1601
`
`
`
`Douglas Carsten
`Wilson, Sonsini, Goodrich & Rosati
`12235 El Camino Real
`Suite 200
`San Diego, CA 92130
`Direct Line: 858-350-2305
`Email: dcarsten@wsgr.com
`Fax: 858-350-2399
`Reg. No. 43,534
`
`Richard Torczon
`Wilson, Sonsini, Goodrich & Rosati
`1700 K St., NW
`Washington, DC 20006
`Direct Line: 202-973-8811
`Email: rtorczon@wsgr.com
`Fax: 202-973-8899
`Reg. No. 34,448
`
`Robert Delafield
`Wilson, Sonsini, Goodrich & Rosati
`900 South Capital of Texas Hwy
`Las Cimas IV, Fifth Floor
`Austin, TX 78746
`Direct Line: 512-338-5432
`Email: bdelafield@wsgr.com
`Fax: 512-338-5499
`Reg. No. 64,709
`
`4851-2470-5065.1
`
`4
`
`

`
`IPR2016-00006
`Patent 8,497,393
`
`
`SERVICE INFORMATION
`
`Patent Owner Docket No. 080618-1601
`
`
`
`Please address all correspondence to the lead counsel at the address shown
`
`above. Patent Owner consents to electronic service by e-mail at:
`
`UT393-IPR@foley.com.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/Stephen B. Maebius/
`Stephen B. Maebius
`Registration No. 35,264
`Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`Date: October 19, 2015
`
`
`
`
`
`
`
`4851-2470-5065.1
`
`5
`
`

`
`IPR2016-00006
`Patent 8,497,393
`
`
`Attorney Docket No. 080618-1601
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Patent
`
`Owner’s Mandatory Notices was served on counsel of record on October 19, 2015
`
`by filing this document through the Patent Review Processing System as well as
`
`delivering a copy via email to the counsel of record for the Petitioner at the
`
`following address: Steadymed-IPR@dlapiper.com
`
`
`
`
`
`
`
`
`
`
`/Stephen B. Maebius/
`
`Stephen B. Maebius
`Registration No. 35,264
`Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Date: October 19, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`4821-7011-5112.1

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket