`Patent Owner’s Mandatory Notices
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FRESENIUS KABI USA, LLC
`Petitioner
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`v.
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`CEPHALON, INC.
`Patent Owner
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`_____________
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`Case IPR2016-00111
`Patent No. 8,895,756
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`_____________________
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`PATENT OWNER’S MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2016-00111
`Patent Owner’s Mandatory Notices
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`Pursuant to 37 C.F.R. § 42.8, Patent Owner, Cephalon, Inc. (“Cephalon”),
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`hereby submits the following mandatory notices.
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`I.
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`REAL PARTY IN INTEREST (37 C.F.R. § 42.8(b)(1))
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`Cephalon is the patent owner and real party-in-interest. Cephalon is an
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`indirect wholly owned subsidiary of Teva Pharmaceuticals Industries Ltd.
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`II. RELATED MATTERS (37 C.F.R. § 42.8(b)(2))
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`A.
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`Judicial Matters
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`U.S. Patent No. 8,895,756 (“’756 Patent”) has been or is currently at issue in
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`the following district court litigation:
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` Cephalon, Inc. v. Hetero Labs Ltd., No. 1:13-cv-02046-GMS (D.
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`Del.), consolidated into In re Bendamustine Consol. Cases, No. 1:13-
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`cv-02046-GMS (D. Del.);
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` Cephalon, Inc. v. Pharmasci. Inc., 1-14-cv-00568-GMS (D. Del.),
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`consolidated into In re Bendamustine Consol. Cases, No. 1:13-cv-
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`02046-GMS (D. Del.)
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` Cephalon, Inc. v. Nang Kuang Pharm. Co., Ltd., No. 1:14-cv-05180-
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`KAM-RER (E.D.N.Y.);
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`1
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`IPR2016-00111
`Patent Owner’s Mandatory Notices
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` Cephalon Inc. v. Sandoz Inc., No. 1:15-cv-00178-GMS (D. Del.),
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`consolidated into In re Bendamustine Consol. Cases, No. 1:13-cv-
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`02046-GMS (D. Del.);
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` Cephalon, Inc. v. Dr. Reddy’s Labs., Ltd., No. 1:15-cv-00179-GMS
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`(D. Del.), consolidated into In re Bendamustine Consol. Cases, No.
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`1:13-cv-02046-GMS (D. Del.);
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` Cephalon, Inc. v. Apotex, Inc., No. 1:15-cv-00404-GMS (D. Del.);
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`and
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` Cephalon, Inc. v. Panacea Biotec, Ltd., No. 1:15-cv-00735-GMS (D.
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`Del.).
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`B. Administrative
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`The ’756 Patent claims priority to U.S. Patent No. 8,436,190, which is
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`currently under review in IPR2015-00503.
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`The ’756 Patent and U.S. Patent No. 8,791,270 (“’270 Patent”) both claim
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`priority to U.S. Provisional Patent Application No. 60/644,354. The ’270 Patent is
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`the subject of petitions for Inter Partes Review in IPR2016-00026 and IPR2016-
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`00098. The Board has not yet decided whether to institute review on these
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`petitions.
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`IPR2016-00111
`Patent Owner’s Mandatory Notices
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`Pending U.S. Patent Application No 14/845,564 claims the benefit of the
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`’756 Patent.
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`III. LEAD AND BACKUP COUNSEL (37 C.F.R. § 42.8(b)(3))
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`LEAD COUNSEL
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`BACK-UP COUNSEL
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`Soumitra (Sam) Deka
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`(Reg. No. 70,252)
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`Aaron Stiefel
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`(Pro Hac Vice)
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`KAYE SCHOLER LLP
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`KAYE SCHOLER LLP
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`Two Palo Alto Square
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`250 West 55th Street
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`3000 El Camino Real, Suite 400
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`New York, NY 10019-9710
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`Palo Alto, CA 94306
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`Tel: (212) 836-8000
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`Fax: (212) 836-8689
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`soumitra.deka@kayescholer.com
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`Tel: (212) 836-8000
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`Fax: (212) 836-8689
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`aaron.stiefel@kayescholer.com
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`IV. SERVICE INFORMATION (37 C.F.R. § 42.8(b)(4))
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`Please direct all correspondence to counsel at the contact information above.
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`Petitioner consents to service by electronic mail at
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`soumitra.deka@kayescholer.com and aaron.stiefel@kayescholer.com.
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`IPR2016-00111
`Patent Owner’s Mandatory Notices
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`Respectfully Submitted,
`KAYE SCHOLER LLP
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`/s/ Soumitra Deka
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`Soumitra (Sam) Deka
`(Reg. No. 70,252)
`Two Palo Alto Square
`3000 El Camino Real, Suite 400
`Palo Alto, CA 94306
`Tel: (212) 836-8000
`Fax: (212) 836-8689
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`Attorneys for Patent Owner
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`4
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`Dated: November 23, 2015
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`IPR2016-00111
`Patent Owner’s Mandatory Notices
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing document,
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`PATENT OWNER’S MANDATORY NOTICES PURSUANT TO 37 C.F.R.
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`§ 42.8, was served via electronic mail and by FedEx on November 23, 2015 to the
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`following counsel of record for the Petitioner:
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`/s/ Soumitra Deka
`Soumitra (Sam) Deka
`(Reg. No. 70,252)
`KAYE SCHOLER LLP
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`Lawrence Sung
`Neal Seth
`WILEY REIN LLP
`nseth@wileyrein.com
`lsung@wileyrein.com
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`WILEY REIN LLP
`ATTN: Patent Administration
`1776 K Street NW
`Washington, DC 20006
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`Dated: November 23, 2015
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`5
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