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`Filed: March 10, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`TEVA PHARMACEUTICALS USA, INC.,
`Petitioner
`
`v.
`
`MONOSOL RX, LLC,
`Patent Owner
`_______________
`
`Case IPR2016-00281 (Patent 8,603,514 B2)
`Case IPR2016-00282 (Patent 8,017,150 B2)1
`
`_______________
`
`DECLARATION OF DANIEL DORAN
`
`1 Per Order, Paper 8 (281 IPR) and Paper 7 (282 IPR), fn. 1, Patent Owner
`hereby attests, in connection with this paper, that it is filing the word-for-word
`identical paper in each proceeding identified in the heading.
`
`MONOSOL RX EXHIBIT 2006 page 0000
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`
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`IPR2016-00281 (8,603,514 B2)
`
`-1-
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`IPR2016-00282 (8,017,150 B2)
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`I, Daniel Doran, hereby declare as follows:
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`1.
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`I am the Docketing Manager for Hoffmann & Baron, LLP, with offices at
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`6900 Jericho Turnpike, Syosset NY 11791 and 6 Campus Drive,
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`Parsippany, NJ 07054 (“Hoffmann” or the “Firm”).
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`2.
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`I oversee the general operations of communications with the Firm, including
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`all incoming mail and documents received via the mail room in Syosset and
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`the docketing and distribution thereof. I am also in charge of the process of
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`opening new matters in the Firm and ensuring that the identification of these
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`new matters are correctly entered into the Firm’s docketing and billing
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`systems.
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`3.
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`On December 7, 2015, the Firm’s mail room in Syosset received, among
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`other things, three banker’s boxes from FedEx. The boxes had FedEx
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`shipping labels with the following tracking numbers: 7751 1902 8582; 7751
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`1902 8983; and 7751 1902 9203. All three boxes were from GOODWIN
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`PROCTOR, 620 8TH AVENUE, NEW YORK, N.Y. 10018 and were
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`addressed to:
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`HOFFMANN & BARON LLP
`RB PHARMACEUTICALS LTD: MONOSOL RX
`6900 JERICHO TURNPIKE
`SYOSSET NY 11791.
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`MONOSOL RX EXHIBIT 2006 page 0001
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`
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`IPR2016-00281 (8,603,514 B2)
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`-2-
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`IPR2016-00282 (8,017,150 B2)
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`4.
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`The three boxes from Goodwin Proctor were opened in my presence, in my
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`office. I examined the contents of the three boxes in order to properly
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`docket the documents in the boxes. In examining the contents, I located
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`documents suitable for docketing entitled “Petition for Inter Partes Review
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`of US Patent 8,475,832" and “Petition for Inter Partes Review of US Patent
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`8,603,514". I went to the USPTO PTAB Trials portal for IPRs and
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`searched by the patent number on each of the petitions and learned that they
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`had received case numbers IPR2016-00280 and IPR2016-00281,
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`respectively. Separate client matters were opened for each and they also
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`received separate sequential internal billing numbers of 1199-0784 and
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`1199-0785, respectively. That is because internal billing numbers are
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`automatically assigned sequentially by the Firm’s intake software for each
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`client, in this case MonoSol Rx LLC (1199).
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`5.
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`The three boxes I examined did not contain a petition for any other patent.
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`In particular, there was no Petition for Inter Partes Review of US Patent
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`8,017,150 in the three FedEx boxes received on December 7, 2015 from
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`Goodwin Proctor.
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`6.
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` Had the Petition for Inter Partes Review of US Patent 8,017,150 been in the
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`three boxes it would have received the next consecutive internal billing
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`MONOSOL RX EXHIBIT 2006 page 0002
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`
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`IPR2016-00281 (8,603,514 B2)
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`-3-
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`IPR2016-00282 (8,017,150 B2)
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`number for the client, i.e., internal billing number 1199-0786. Instead the
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`internal billing number 1199-0786 for MonoSol was generated on
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`December 8, 2015 for an unrelated matter. Ultimately, Inter Partes Review
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`of US Patent 8,017,150 received the next internal billing number of 1199-
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`0787 on December 14, 2015.
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`7.
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`On Monday, December 7, 2015, after ascertaining the parties involved in
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`the petitions, I notified Michael Chakansky, among others, of the Firm’s
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`Parsippany, NJ office of the receipt of the IPR petitions for the 8,475,832
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`and 8,603,514 patents. Later that day, Mr. Chakansky called me and
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`instructed me to reseal and send him the three boxes, complete with all their
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`contents and shipping labels as attached, by overnight FedEx to his office in
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`Parsippany, which I did that day.
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`8.
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`On Friday, December 18, 2015, among other items received, the Hoffmann
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`& Baron mail room in Syosset received a banker’s box from FedEx. The
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`box was from GOODWIN PROCTOR LLP, 901 NEW YORK AVE NW FL
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`9, WASHINGTON DC, 20001 and was addressed to:
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`MONOSOL RX, LLC
`RB PHARMACEUTICALS LTD
`6900 JERICHO TURNPIKE
`SYOSSET NY 11791.
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`MONOSOL RX EXHIBIT 2006 page 0003
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`
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`IPR20l6—00281 (8,603,514 B2)
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`-4-
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`IPR20 1 6—00282 (8,0l 7,150 B2)
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`9.
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`On that day, Friday, December 18, 2015, I examined the contents of the box
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`and located three documents suitable for docketing which pertained to
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`PTAB notices of filing dates accorded in IPR2016—00280, IPR2016-00281
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`and IPR2016-00282.
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`10. On that day, Friday, December 18, 2015, I notified Michael Chakansky of
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`the receipt of the box and the three notices referenced in paragraph 9 and
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`Mr. Chakansky instructed me to reseal and send him the box complete with
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`all its contents and its shipping label as attached, by overnight FedEx to his
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`office in Parsippany, which I did.
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`I declare under penalty of perjury that the foregoing is true and correct.
`...—.
`
`Executed on March 10, 2016. .-—* "
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`
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`
`MONOSOL RX EXHIBIT 2006 page 0004
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`
`
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`IPR2016-00281 (8,603,514 B2)
`
`-5-
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`IPR2016-00282 (8,017,150 B2)
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this the 10th day of March, 2016, the foregoing
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`DECLARATION OF DANIEL DORAN was served in its entirety on the
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`following counsel of record by electronic service by email at the email addresses
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`consented to for service as provided in the Petitions, Papers No. 1, 281 IPR (pages
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`10-11) & 282 IPR (pages 6-8), and as set forth below:
`
`Elizabeth Holland, Esq.
`GOODWIN PROCTER LLP
`The New York Times Building
`620 Eight Avenue
`New York, N.Y. 10018
`(212) 813-8800
`
`eholland@goodwinprocter.com
`eyost@goodwinprocter.com
`jstull@goodwinprocter.com
`eblais@goodwinprocter.com
`rfrederickson@goodwinprocter.com
`rcerwinski@goodwinprocter.com
`
`By:
`
`/Michael I. Chakansky/
`Michael I. Chakansky (Reg. No. 31,600)
`Hoffmann & Baron, LLP
`6 Campus Drive
`Parsippany, N.J. 07054
`mchakansky@hbiplaw.com
`Tel: 973.331.1700
`
`MONOSOL RX EXHIBIT 2006 page 0005