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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`
`
`
`LUPIN LTD. AND LUPIN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`HORIZON THERAPEUTICS, INC.,
`Patent Owner.
`
`__________
`
`
`
`Case IPR2016-00283
`Patent 8,642,012
`
`__________
`
`
`
`PATENT OWNER’S UPDATED MANDATORY NOTICES
`
`

`
`Pursuant to 37 C.F.R. § 42.8(a), the Patent Owner submits the following
`
`updated mandatory notices. Specifically, related-matter information is updated. In
`
`particular, the Patent Owner points out that the following new IPR petition has
`
`been filed:
`
` IPR2016-00829, petition filed by the same petitioners as in this case,
`
`Lupin Ltd. and Lupin Pharmaceuticals Inc., on April 1, 2016, directed at
`
`U.S. Patent 9,095,559, which is also owned by the Patent Owner and has
`
`one common inventor with the ʼ012 Patent at issue in this case.
`
`Also, the Patent Owner notes the following update to one related litigation:
`
` Horizon Therapeutics Inc. v. Lupin Ltd. and Lupin Pharmaceuticals Inc.,
`
`Civil Action No. 1:15-cv-07624-RBK-JS (D. N.J. filed Oct. 19, 2015).
`
`The Patent Owner’s original complaint accused the Petitioners of
`
`infringing, inter alia, the ʼ012 Patent and the ʼ559 Patent. An amended
`
`complaint filed April 6, 2016 accuses the Petitioners of infringing just the
`
`ʼ559 Patent. Thus, the Patent Owner no longer accuses the Petitioners of
`
`infringing the ʼ012 Patent, the subject of this IPR, in this litigation.
`
`
`
`
`
`IPR2016-00283
`
`PO Updated Mandatory Notices
`
`Page 1 of 2
`
`

`
`Date: 2016 Apr. 21
`
`
`
`Respectfully submitted,
`
`By: / M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`Backup Counsel for Patent Owner
`
`IPR2016-00283
`
`PO Initial Mandatory Notices COS
`
`
`
`

`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on April 21, 2016, copies of the foregoing PATENT
`
`OWNER’S UPDATED MANDATORY NOTICES and all documents filed with it
`
`were served via electronic mail, as agreed to by counsel, upon the following
`
`counsel for the Petitioner:
`
`Elizabeth J. Holland: EHolland@goodwinprocter.com
`
`Cynthia Lambert Hardman: CHardman@goodwinprocter.com
`
`
`
`/ M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`
`
`
`IPR2016-00283
`
`PO Updated Mandatory Notices COS

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