throbber
Paper No. ________
`
`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
`_______________
`
`PATENT OWNER’S
`MANDATORY NOTICE INFORMATION
`PURSUANT TO 37 C.F.R. § 42.8(a)
`
`

`
`IPR2016-00281
`
`U.S. Patent No. 8,603,514 B2
`
`Pursuant to 37 C.F.R. § 42.8(a), MonoSol Rx, LLC (“MonoSol” or “Patent
`
`Owner”) submits herewith the following required mandatory notice information.
`
`I.
`
`Real party-in-interest (37 C.F.R. § 42.8(b)(1))
`
`The real party-in-interest is the Patent Owner of U.S. Patent No.
`
`8,603,514 B2 (“the ‘514 Patent”), MonoSol Rx, LLC , 30 Technology Drive,
`
`Warren, New Jersey, 07059, a Delaware limited liability company.
`
`Indivior Inc. (formerly known as Reckitt Benckiser Pharmaceuticals Inc.),
`
`10710 Midlothian Turnpike, Suite 430, Richmond, Virginia, 23235, a Delaware
`
`corporation (“Indivior”), an exclusive licensee under the ‘514 Patent, is also a
`
`real party-in-interest.
`
`II.
`
`Related matters (37 C.F.R. § 42.8(b)(2))
`
`Other than as noted below, Patent Owner is not aware of any other judicial
`
`or administrative matter (see 77 Fed. Reg. 48,756, 48,760 (August 14, 2012)) that,
`
`potentially or actually, would affect, or be affected by, a decision in the
`
`proceeding herein.
`
`-1-
`
`

`
`IPR2016-00281
`
`U.S. Patent No. 8,603,514 B2
`
`Patent Owner filed a continuation application serial no. 14/572,173, which
`
`is currently pending, off U.S. patent application no. 14/032,588, now abandoned,
`
`which was filed as a division of U.S. patent application no. 11/775,484 (“the ‘514
`
`patent application”). Patent Owner filed a continuation application serial no.
`
`13/853,237 off the ‘514 patent application, which issued as U.S. Patent No.
`
`8,652,378 B1.
`
`Case Name
`
`Reckitt Benckiser Pharmaceuticals Inc., RB
`Pharmaceuticals Limited, and MonoSol Rx
`LLC v. Teva Pharmaceuticals USA, Inc.
`Indivior Inc. (formerly known as Reckitt
`Benckiser Pharmaceuticals Inc.), Indivior UK
`Limited (formerly known as RB
`Pharmaceuticals Limited), and MonoSol Rx
`LLC v. Sandoz Inc.
`Indivior Inc. (formerly known as Reckitt
`Benckiser Pharmaceuticals Inc.), Indivior UK
`Limited (formerly known as RB
`Pharmaceuticals Limited), and MonoSol Rx
`LLC v. Mylan Technologies Inc., et al.
`
`Case Number
`(Dated Filed)
`1-14-cv-01451
`(12/02/2014)
`
`1-15-cv-01051
`(11/13/2015)
`
`District Court
`
`DED
`
`DED
`
`1-15-cv-00209
`(11/05/2015)
`
`WVND
`
`-2-
`
`

`
`IPR2016-00281
`
`U.S. Patent No. 8,603,514 B2
`
`Indivior Inc. (formerly known as Reckitt
`Benckiser Pharmaceuticals Inc.), Indivior UK
`Limited (formerly known as RB
`Pharmaceuticals Limited), and MonoSol Rx
`LLC v. Mylan Technologies Inc., et al.
`Reckitt Benckiser Pharmaceuticals Inc., RB
`Pharmaceuticals Limited, and MonoSol Rx
`LLC v. Alvogen Pine Brook, Inc.
`Reckitt Benckiser Pharmaceuticals Inc., RB
`Pharmaceuticals Limited, and MonoSol Rx
`LLC v. Par Pharmaceutical, Inc. And
`Intelgenx Technologies Corp.
`Reckitt Benckiser Pharmaceuticals Inc., RB
`Pharmaceuticals Limited, and MonoSol Rx
`LLC v. Alvogen Pine Brook Inc. And Alvogen
`Group, Inc.
`Reckitt Benckiser Pharmaceuticals Inc., RB
`Pharmaceuticals Limited, and MonoSol Rx
`LLC v. Watson Laboratories Inc. and Activis,
`Inc.
`Reckitt Benckiser Pharmaceuticals Inc., RB
`Pharmaceuticals Limited, and MonoSol Rx
`LLC v. Par Pharmaceutical, Inc., Intelgenx
`Technologies Corp., and LTS Lohmann
`Therapy Systems Corp.
`
`1-15-cv-01016
`(11/04/2015)
`
`DED
`
`DED
`
`DED
`
`DED
`
`DED
`
`DED
`
`1-15-cv-00477
`(06/10/2015)
`
`1-14-cv-00422
`(04/04/2014)
`
`1-13-cv-02003
`(12/06/2013)
`closed
`(05/27/2014)
`1-13-cv-01674
`(10/08/2013)
`
`1-13-cv-01461
`(08/20/2013)
`closed
`(05/27/2014)
`
`-3-
`
`

`
`IPR2016-00281
`
`U.S. Patent No. 8,603,514 B2
`
`III. Lead and Back-up Counsel (37 C.F.R. § 42.8(b)(3) & 37 C.F.R. §
`42.10(a)&(b))
`
`Hoffmann & Baron, LLP, counsel of record in the subject patent or
`
`application, on behalf of Patent Owner, designates the following individuals as
`
`Patent Owner’s lead counsel and back-up counsel:
`
`Lead Counsel
`
`Back-up Counsel
`
`Daniel A. Scola, Jr.
`PTO Reg. No. 29,855
`dscola@hbiplaw.com
`(973) 585-2003
`
`Michael I. Chakansky
`PTO Reg. No. 31,600
`mchakansky@hbiplaw.com
`(973) 585-2024
`
`Both partners at Hoffmann & Baron, LLP, 6 Campus Drive, Parsippany, New
`
`Jersey 07054 (Tel: 973.331.1700).
`
`V.
`
`Service information pursuant to 37 C.F.R. §42.8(b)(4))
`
`Service on Patent Owner may be made electronically by using all the
`
`following three email addresses together in providing service:
`
`dscola@hbiplaw.com
`mchakansky@hbiplaw.com
`514ipr@hbiplaw.com
`
`-4-
`
`

`
`IPR2016-00281
`
`U.S. Patent No. 8,603,514 B2
`
`Service on Patent Owner may be made by Postal Mailing or Hand-delivery as
`
`follows, but electronic service as indicated above is always requested:
`
`Daniel A. Scola, Jr. (Lead Counsel)
`Michael I. Chakansky (Back-up Counsel)
`Hoffmann & Baron, LLP
`6 Campus Drive
`Parsippany, New Jersey 07054
`Tel: 973.331.1700
`Fax: 973.331.1717
`
`Dated: December 18, 2015
`
`Respectfully submitted,
`
` HOFFMANN & BARON, LLP
`/Daniel A. Scola, Jr./
` 6900 Jericho Turnpike
`Daniel A. Scola, Jr.
`Registration No. 29,855 Syosset, New York 11791
`Michael I. Chakansky
` (973) 331-1700
`Registration No. 31,600
`
`Attorneys for Petitioner MonoSol Rx, LLC
`
`-5-
`
`

`
`IPR2016-00281
`
`U.S. Patent No. 8,603,514 B2
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on this the 18th day of December, 2015, the foregoing
`PATENT OWNER’S MANDATORY NOTICE INFORMATION
`PURSUANT TO 37 C.F.R. § 42.8(a) was served in its entirety on the following
`counsel of record by electronic service by email at the email addresses consented
`to for service as provided in the Petition, Paper 1, at pages 10-11, 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
`
`-6-

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