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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 IPR2016-00282
`Patent 8,017,150 B2
`_______________
`
`PATENT OWNER’S
`MANDATORY NOTICE INFORMATION
`PURSUANT TO 37 C.F.R. § 42.8(a)
`
`

`
`IPR2016-00282
`
`U.S. Patent No. 8,017,150 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.
`
`8,017,150 B2 (“the ‘150 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 ‘150 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-
`
`

`
`IPR2016-00282
`
`U.S. Patent No. 8,017,150 B2
`
`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.
`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.
`
`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
`
`1-15-cv-01016
`(11/04/2015)
`
`DED
`
`1-15-cv-00477
`(06/10/2015)
`
`1-14-cv-00422
`(04/04/2014)
`
`DED
`
`DED
`
`-2-
`
`

`
`IPR2016-00282
`
`U.S. Patent No. 8,017,150 B2
`
`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.
`
`1-13-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)
`
`DED
`
`DED
`
`DED
`
`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
`
`-3-
`
`

`
`IPR2016-00282
`
`U.S. Patent No. 8,017,150 B2
`
`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
`150ipr@hbiplaw.com
`
`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
`
`-4-
`
`

`
`IPR2016-00282
`
`U.S. Patent No. 8,017,150 B2
`
`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-
`
`

`
`IPR2016-00282
`
`U.S. Patent No. 8,017,150 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 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
`
`-6-

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