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Paper No. ____
`Date filed: January 26, 2017
`
`
`Filed On Behalf Of: Novartis AG
`
`By: Nicholas N. Kallas
`
`NKallas@fchs.com
`
`ZortressAfinitorIPR@fchs.com
`
`(212) 218-2100
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`PAR PHARMACEUTICAL, INC.,
`BRECKENRIDGE PHARMACEUTICAL, INC., AND
`ROXANE LABORATORIES, INC.,
`Petitioners,
`
`v.
`
`NOVARTIS AG,
`Patent Owner.
`
`
`
`Case IPR2016-000841
`Patent 5,665,772
`
`
`
`
`
`
`
`SECOND UPDATE TO PATENT OWNER’S MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8(a)(3)
`
`
`
`1 Breckenridge Pharmaceutical, Inc. was joined as a party to this proceeding via a
`Motion for Joinder in IPR2016-01023; Roxane Laboratories, Inc. was joined as a
`party via a Motion for Joinder in IPR2016-01102.
`
`

`

`
`
`Pursuant to the requirements of 37 C.F.R. § 42.8(a)(3), Novartis AG
`
`(“Novartis” or “Patent Owner”) submits the following update to its November 13,
`
`2015 Mandatory Notices (Paper No. 5) as amended by its July 12, 2016 Updated
`
`
`
`Mandatory Notices (Paper No. 23).
`
`REAL PARTY-IN-INTEREST PURSUANT TO 37 C.F.R. § 42.8(b)(1)
`
`The real party-in-interest information has not changed.
`
`RELATED MATTERS PURSUANT TO 37 C.F.R. § 42.8(b)(2)
`
`The related matters information has not changed.
`
`IDENTIFICATION OF LEAD AND BACK-UP COUNSEL
`PURSUANT TO 37 C.F.R. §§ 42.8(b)(3) and 42.10
`
`The lead counsel information has not changed.
`
`The Patent Owner hereby notifies the Board that it is removing back-up
`
`counsel Raymond R. Mandra (Reg. No. 34,382) and adding attorney of record
`
`Charlotte Jacobsen (admitted pro hac vice) as additional back-up counsel, as
`
`shown below. All other counsel information remains the same.
`
`Lead Counsel
`Nicholas N. Kallas
`FITZPATRICK, CELLA, HARPER &
`SCINTO
`1290 Avenue of the Americas
`New York, NY 10104 -3800
`Tel. 212-218-2100
`nkallas@fchs.com
`
`Back-Up Counsel
`Christina Schwarz (pro hac vice)
`FITZPATRICK, CELLA, HARPER &
`SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`cschwarz@fchs.com
`
`
`
`1
`
`

`

`
`
`Additional Back-Up Counsel
`Peter J. Waibel (Registration No.
`43,228)
`NOVARTIS PHARMACEUTICALS
`CORPORATION
`One Health Plaza, Bldg. 430
`East Hanover, NJ 07936-1080
`Tel. 862-778-7838
`
`
`
`
`Additional Back-Up Counsel
`Charlotte Jacobsen (pro hac vice)
`FITZPATRICK, CELLA, HARPER &
`SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`cjacobsen@fchs.com
`
`A power of attorney designating Charlotte Jacobsen was filed on November
`
`3, 2016 (Paper No. 42).
`
`SERVICE INFORMATION PURSUANT TO 37 C.F.R. § 42.8(b)(4)
`
`The service information has not changed.
`
`/ Nicholas N. Kallas /
`Nicholas N. Kallas
`Registration No. 31,530
`Lead Counsel for Patent Owner
`FITZPATRICK, CELLA, HARPER
`& SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`
`2
`
`
`
`Respectfully submitted,
`
`
`
`Dated: January 26, 2017
`
`
`
`
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of the Second Update To Patent Owner’s Mandatory
`
`Notices Under 37 C.F.R. § 42.8(a)(3) was served on January 26, 2017 by causing it
`
`to be sent by email to counsel for Petitioners at the following email addresses:
`
`
`
`Daniel G. Brown (dan.brown@lw.com)
`
`Robert Steinberg (bob.steinberg@lw.com)
`
`Brenda L. Danek (Brenda.danek@lw.com)
`
`Jonathan M. Strang (jonathan.strang@lw.com)
`
`Matthew L. Fedowitz (mfedowitz@merchantgould.com)
`
`B. Jefferson Boggs (jboggs@merchantgould.com)
`
`Daniel R. Evans (devans@merchantgould.com)
`
`Keith A. Zullow (kzullow@goodwinlaw.com)
`
`Marta Delsignore (mdelsignore@goodwinprocter.com)
`
`/ Nicholas N. Kallas /
`Nicholas N. Kallas
`Registration No. 31,530
`Lead Counsel for Patent Owner
`FITZPATRICK, CELLA, HARPER
`& SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`
`
`
`Dated: January 26, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`

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