UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`
`
`
`LUPIN LTD. AND LUPIN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`HYPERION THERAPEUTICS, INC.,
`Patent Owner.
`
`__________
`
`
`
`Case IPR2016-00283
`Patent 8,642,012
`
`__________
`
`
`
`PATENT OWNER’S INITIAL MANDATORY NOTICES
`
`
`
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`
`
`
`LUPIN LTD. AND LUPIN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`HYPERION THERAPEUTICS, INC.,
`Patent Owner.
`
`__________
`
`
`
`Case IPR2016-00283
`Patent 8,642,012
`
`__________
`
`
`
`PATENT OWNER’S INITIAL MANDATORY NOTICES
`
`
`
`Pursuant to 37 C.F.R. § 42.8(a), the Patent Owner submits the following
`
`initial mandatory notices.
`
`
`
`1.
`
`Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`U.S. Patent No. 8,642,012 is owned by Horizon Therapeutics, Inc. (f/k/a
`
`Hyperion Therapeutics, Inc.), a corporation organized and existing under the laws
`
`of the State of Delaware, having its principal place of business at 520 Lake Cook
`
`Road, Suite 520, Deerfield, Illinois, 60015. Pursuant to the requirements of 37
`
`C.F.R. § 42.8(b)(1), the undersigned state that the real parties-in-interest are
`
`Horizon Therapeutics, Inc., as well its corporate parents (collectively, Horizon):
`
` Horizon Pharma, Inc., a corporation organized and existing under the
`
`laws of the State of Delaware having its principal place of business at
`
`520 Lake Cook Road, Suite 520, Deerfield, Illinois, 60015, which is
`
`wholly owned by;
`
` Horizon Pharma Finance S.á r.l., an entity organized and existing under
`
`the laws of Luxembourg, having its principal place of business at 19 Rue
`
`de Bitbourg, Luxembourg, which is wholly owned by;
`
` Horizon Pharma Capital Limited, a corporation organized and existing
`
`under the laws of Ireland, having its principal place of business at
`
`Connaught House, 1st Floor, 1 Burlington Road, Dublin 4, Ireland, which
`
`is wholly owned by;
`
`IPR2016-00283
`
`PO Initial Mandatory Notices
`
`Page 1 of 6
`
`
`
` Horizon Pharma Holdings Limited, a corporation organized and existing
`
`under the laws of Ireland, having its principal place of business at
`
`Connaught House, 1st Floor, 1 Burlington Road, Dublin 4, Ireland, which
`
`is wholly owned by; and
`
` Horizon Pharma plc, a corporation organized and existing under the laws
`
`of Ireland, having its principal place of business at Connaught House, 1st
`
`Floor, 1 Burlington Road, Dublin 4, Ireland.
`
`
`
`2.
`
`Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The following judicial and administrative matters may affect or be affected
`
`by a decision in this proceeding:
`
`(a) Hyperion Therapeutics Inc. v. Par Pharmaceutical, Inc., Civil Action
`
`No. 2:14-cv-00384-JRG-RSP (E.D. Tex. filed April 23, 2014). The
`
`Patent Owner has accused Par of infringing the same ʼ012 Patent at
`
`issue in this IPR. On December 14, 2015, the district court stayed that
`
`case pending resolution of IPR2015-01117 and IPR2015-0127.
`
`(b) Horizon Therapeutics Inc. v. Lupin Ltd. and Lupin Pharmaceuticals
`
`Inc., Civil Action No. 1:15-cv-076248-RBK-JS (D. N.J. filed Oct. 19,
`
`2015). The Patent Owner has accused the Petitioners of infringing the
`
`same ʼ012 Patent at issue in this IPR.
`
`IPR2016-00283
`
`PO Initial Mandatory Notices
`
`Page 2 of 6
`
`
`
`(c)
`
`IPR2015-01117, petition filed April 29, 2015, by Par Pharmaceutical,
`
`Inc., directed at the same ʼ012 Patent at issue in this case. The Board
`
`instituted trial in an Institution Decision dated November 4, 2015.
`
`The present Petitioners have filed a motion for joinder with IPR2015-
`
`01117.
`
`(d)
`
`IPR2015-01127, petition filed April 29, 2015, by Par Pharmaceutical,
`
`Inc., directed at U.S. Patent No. 8,404,215. The ʼ215 Patent is also
`
`owned by Horizon Therapeutics, Inc. and has one common inventor
`
`with the ʼ012 Patent at issue in this case. The Board instituted trial in
`
`an Institution Decision dated November 4, 2015.
`
`(e)
`
`IPR2016-00284, petition filed December 4, 2015, by the present
`
`Petitioners, directed at the ʼ215 Patent.
`
`(f) Abandoned U.S. Patent Appl. No. 14/135,318, filed on December 19,
`
`2013, claims benefit of the ʼ012 Patent.
`
`(g) Abandoned U.S. Patent Appl. No. 13/061,509, filed on June 15, 2011,
`
`claims benefit of the ʼ012 Patent.
`
`3.
`
`Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`
`Pursuant to 37 C.F.R. §§ 42.8(b)(3) and 42.10(a), the Patent Owner provides
`
`the following designation of counsel:
`
`IPR2016-00283
`
`PO Initial Mandatory Notices
`
`Page 3 of 6
`
`
`
`
`
`LEAD COUNSEL
`
`Robert Green (Reg. No. 27,555)
`Green, Griffith & Borg-Breen, LLP
`NBC Tower, Suite 3100
`455 North Cityfront Plaza
`Chicago, Illinois 60611
`Phone: (312) 883-8000
`Fax: (312) 883-8001
`rgreen@greengriffith.com
`
`BACKUP COUNSEL
`
`Lauren Stevens (Reg. No. 36,691)
`Global Patent Group, LLC
`1005 N. Warson Road, Suite 404
`St. Louis, Missouri 63132
`Phone: (650) 387-3813
`Fax: (314)-685-2300
`lstevens@globalpatentgroup.com
`
`Dennis Bennett (Reg. No. 34,547)
`Global Patent Group, LLC
`1005 N. Warson Road, Suite 404
`St. Louis, Missouri 63132
`Phone: (314) 812-8018
`Fax: (314)-685-2300
`dennisbennett@globalpatentgroup.com
`
`Matthew Phillips (Reg. No. 43,403)
`Renaissance IP Law Group LLP
`7327 SW Barnes Road #521
`Portland, Oregon 97223
`Phone: (503) 964-1129
`Fax: (503) 517-9919
`matthew.phillips@renaissanceiplaw.com
`
`
`IPR2016-00283
`
`PO Initial Mandatory Notices
`
`Page 4 of 6
`
`
`
`Emer Simic (Reg. No. 61,235)
`Green, Griffith & Borg-Breen, LLP
`NBC Tower, Suite 3100
`455 North Cityfront Plaza
`Chicago, Illinois 60611
`Phone: (312) 883-8000
`Fax: (312) 883-8001
`esimic@greengriffith.com
`
`Jessica Tyrus (Reg. No. 64,742)
`Green, Griffith & Borg-Breen, LLP
`NBC Tower, Suite 3100
`455 North Cityfront Plaza
`Chicago, Illinois 60611
`Phone: (312) 883-8000
`Fax: (312) 883-8001
`jtyrus@greengriffith.com
`
`
`
`
`Pursuant to 37 C.F.R. § 42.10(b), a power of attorney for lead counsel
`
`Robert Green and back-up counsel Matthew Phillips, Emer Simic, and Jessica
`
`Tyrus is concurrently filed. Backup counsel Lauren Stevens and Dennis Bennett
`
`already have power of attorney in the underlying patent.
`
`
`
`
`
`4.
`
`Service Information (37 C.F.R. § 42.8(b)(4))
`
`Service of any documents may be made at the email addresses for the lead
`
`and back-up counsel designated above. If physical delivery is necessary, such
`
`service may be made at the postal addresses for the lead and back-up counsel
`
`designated above with a courtesy notification to each of their respective email
`
`addresses at the time of sending.
`
`IPR2016-00283
`
`PO Initial Mandatory Notices
`
`Page 5 of 6
`
`
`
`5.
`
`Payment of Fees under 37 C.F.R. § 42.103
`
`The undersigned authorizes the U.S. Patent and Trademark Office to charge
`
`any applicable fees associated with this proceeding to Deposit Account No. 50-
`
`4297.
`
`Date: 2015 Dec. 28
`
`Respectfully submitted,
`
`By: / M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
`Backup Counsel for Patent Owner
`
`IPR2016-00283
`
`PO Initial Mandatory Notices
`
`Page 6 of 6
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I hereby certify that on December 28, 2015, copies of the foregoing
`
`PATENT OWNER’S INITIAL 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 Initial Mandatory Notices COS
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