IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TEVA PHARMACEUTICALS USA, INC.,
`
`Petitioner,
`
`INDIVIOR UK LIMITED
`
`(F/K/A RB PHARMACEUTICALS LIMITED),
`Patent Owner.
`
`Case No. IPR2016—O0280
`
`Patent No. 8,475,832
`
`PATENT OWNER INDIVIOR UK LIMITED’S
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`TEVA PHARMACEUTICALS USA, INC.,
`
`Petitioner,
`
`INDIVIOR UK LIMITED
`
`(F/K/A RB PHARMACEUTICALS LIMITED),
`Patent Owner.
`
`Case No. IPR2016—O0280
`
`Patent No. 8,475,832
`
`PATENT OWNER INDIVIOR UK LIMITED’S
`
`MANDATORY NOTICES UNDER 37 C.F.R. § 42.8
`
`
`
`Patent No. 8,475,832
`
`Case No. IPR2016—0O280
`
`Pursuant to 37 C.F.R. § 42.8, Patent Owner Indivior UK Limited submits
`
`the following Mandatory Notices.
`
`In accordance with 37 C.F.R. 42.8(a)(2), these
`
`Mandatory Notices are being timely filed within 21 days of service of the petition}
`
`A.
`
`Real Party-In-Interest Under 37 C.F.R. § 42.8(b)(1)
`
`The real parties-in-interest are Indivior UK Limited, Indivior PLC, Indivior
`
`Inc. and MonoSol Rx, LLC.
`
`B.
`
`Related Matters Under 37 C.F.R. § 42.8(b)(2)
`
`The Patent Trial and Appeal Board denied an earlier—filed Petition for Inter
`
`Partes Review of U.S. Patent No. 8,475,832 (“the ‘832 Patent”), IPR2014-00998.
`
`Inter Partes Review No. IPR2014-00325 is currently on appeal to the Court of
`
`‘ On December 23, 2015, the Office issued a statement that, in light of the
`
`emergency situation due to the power outage, the Office will consider each day
`
`from Tuesday, December 22, 2015, through Thursday, December 24, 2015 to be a
`
`“Federal holiday within the District of Columbia” under, inter alia, 35 U.S.C. § 21
`
`and 37 C.F.R. § 1.7. Section 42.1 states that § 1.7 applies to proceedings before
`
`the Board. Accordingly, Mandatory Notices otherwise due on December 24, 2015,
`
`are timely filed on Monday, December 28, 2015, the next succeeding business day
`
`in the District of Columbia (given the Christmas day Federal Holiday and the
`
`weekend).
`
`
`
`Patent No. 8,475,832
`
`Case No. IPR2016—O0280
`
`Appeals for the Federal Circuit, Docket No. 16-1044.
`
`Patent Owner further
`
`identifies the following related judicial proceedings involving the ‘832 Patent:
`
`Case Caption
`Indivior Inc. et al. v. Sandoz Inc., 1-15-cV—0105 1
`
`Disposition
`pending
`
`(D. Del.)
`
`Indivior Inc. et al. v. Mylan Technologies Inc. et
`
`pending
`
`al., 1—15—cV—0O209 (N.D.W.V.)
`
`Indivior Inc. et al. v. Mylan Technologies Inc. et
`
`pending
`
`al., 1—15—cV-01016 (D. Del.)
`
`ReckittBenckiserPharmaceuticals Inc. et al. v.
`
`ipending
`
`Alvogen Pine Brook Inc., 1~15—cv—0O477 (D. Del.)
`
`Reckitt Benckiser Pharmaceuticals Inc. et al. v.
`
`pending
`
`Teva Pharmaceuticals USA Inc., 1-14-cV—01451 (D.
`
`Del.)
`
`Bi0Delivery Sciences International, Inc. v. Reckitt
`
`pending (stayed)
`
`7
`
`Benckiser Pharmaceuticals Inc. et al., 5~14—cV~
`
`00529 (E.D.N.C.)
`
`Reckitt Benckiser Pharmaceuticals Inc. et al. v. Par
`
`consolidated with 1-13—cv
`
`Pharmaceutical, Inc. et al., 1-14—cV—OO422 (D.
`
`01674 (D.De1.)
`
`J
`
`Del.)
`
`
`
`Patent No. 8,475,832
`
`Case No. IPR2016~00280
`
`Case Caption
`Reckitt Benckiser Pharmaceuticals Inc. et al. 12.
`
`Disposition
`Closed
`
`Alvogen Pine Brook Inc., 1-13—CV—02003 (D. Del.)
`
`Reckitt Benckiser Pharmaceuticals Inc. et al. v.
`
`Closed
`
`BioDelivery Sciences International, Inc. , 5-13-CV-
`
`00760 (E.D.N.C.)
`
`Reckitt Benckiser Pharmaceuticals Inc. et al. v.
`
`pending
`
`Watson Laboratories Inc. et al., 1-13-cV—01674 (D.
`
`Del.)
`
`Reckitt Benckiser Pharmaceuticals Inc. et al. v. Par Closed
`
`Pharmaceutical, Inc. et al., 1—13—cV-1461 (D. Del.)
`
`C.
`
`Lead and Back-Up Counsel Under 37 C.F.R. § 42.8(b)(3)
`
`
`
`
`
`
`
`
`
`Enrique D. Longton (Reg. No. 47,304)
`rlongton@coV.com
`Postal and Hand—De1iVery Address:
`Covington & Burling LLP
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`Telephone: (202) 662-5108
`Facsimile: (202) 778-5108
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Andrea G. Reister (Reg. No. 36,253)
`areister@coV.Com
`Postal and Hand—De1ivery Address:
`Covington & Burling LLP
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`Telephone: (202) 662-5141
`Facsimile: (202) 778-5141
`
`Lead Counsel
`
`Back-Up Counsel
`
`
`
`Patent No. 8,475,832 ‘P
`
`Case No. IPR2016—0O280
`
`D.
`
`Service Information Under 37 C.F.R. § 42.8(b) (4)
`
`Service information for lead and back—up counsel
`
`is provided in the
`
`designation of lead and back—up counsel, above. Service of any documents via
`
`hand—delivery may be made at the postal mailing address of the respective lead and
`
`back—up counsel designated above. Patent Owner Indivior UK Limited consents to
`
`electronic service by email at the above listed email addresses of lead and back—up
`
`counsel.
`
`E.
`
`Power of Attorney
`
`A Power of Attorney to transact all business in the United States Patent &
`
`Trademark Office (“USPTO”)
`
`in connection with the above-referenced Inter
`
`Partes Review from Patent Owner Indivior UK Limited to the above—designated
`
`counsel at Covington & Burling LLP is being filed concurrently with these
`
`Mandatory Notices. The Power of Attorney is accompanied by a Statement Under
`
`37 C.F.R. § 3.73(b), executed by the Patent Owner.
`
`
`
`Patent No. 8,475,832
`
`Case No. IPR2016—00280
`
` Date: December 28 2015
`
`Respectfully submitted,
`
`2: 5, 41?;
`
`Andrea G. Reist
`Registration"No. 36,253
`Enrique D. Longton
`Registration No. 47,304
`COVINGTON & BURLING LLP
`
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`(202) 662-6000
`Attorneys for Patent Owner
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on this 28th day of December
`
`2015,
`
`the foregoing Patent Owner Indivior UK Limited’s Mandatory Notices
`
`Under 37 C.F.R. § 42.8 was served by FedEx, a means at least as fast and reliable
`
`as Priority Mail EXpI'€SS®, on the following counsel of record for petitioner.
`
`Elizabeth Holland
`
`Goodwin Procter LLP
`
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018
`
`Eleanor M. Yost
`
`J. Coy Stull
`Goodwin Procter LLP
`
`901 New York Avenue NW
`
`Washington, DC 20001
`
`Date: December 28, 2015
`
`(fit?/5”éé’“%
`
`,,t,/
`
`sq.
`,
`Andrea G. Reist
`Registration N6; 36,253
`
`r"”“"\
`I
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`
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`
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`
`{ 5 @124
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