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Paper No. ___
`Date Filed: Dec. 18, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`AMERIGEN PHARMACEUTICALS LIMITED
`Petitioner,
`
`v.
`
`JANSSEN ONCOLOGY, INC.,
`Patent Owner.
`
`________________
`
`Case IPR2016-00286
`Patent 8,822,438 B2
`
`________________
`
`
`JANSSEN ONCOLOGY, INC.’S MANDATORY NOTICES
`
`
`
`
`
`
`
`
`

`
`Janssen Oncology, Inc. submits the following mandatory disclosures
`
`pursuant to 37 C.F.R. §42.8.
`
`REAL PARTY-IN-INTEREST
`
`Janssen Oncology, Inc., a wholly-owned subsidiary of Johnson & Johnson
`
`(“J&J”), is a real party-in-interest. J&J, a publicly held company, is also a real
`
`party-in-interest.
`
`RELATED MATTERS
`
`U.S. Patent 8,822,438 (the “’438 Patent”) issued from U.S. Application No.
`
`13/034,340 (the “’340 Application”). U.S. Patent Application No. 14/750,297,
`
`which is currently pending before the Office, claims the benefit of the ’340
`
`Application.
`
`The ’438 Patent is being asserted in the following patent infringement
`
`lawsuits:
`
`• BTG International Limited, et al. v. Actavis Laboratories FL, Inc., et
`
`al., C.A. No. 2:15-cv-05909-KM-JBC (D.N.J.); and
`
`• Janssen Biotech, Inc., et al. v. Mylan Pharmaceuticals Inc., et al.,
`
`C.A. No. 1:15-cv-00130-IMK (N.D. W. Va.).
`
`The ’438 Patent was asserted in the following patent infringement lawsuits
`
`that have now been terminated:
`
`2
`
`

`
`• Janssen Biotech, Inc., et al. v. Par Pharmaceutical, Inc., et al., C.A.
`
`No. 1:15-cv-00679-SLR (D. Del.); and
`
`• BTG International Limited, et al. v. Actavis Laboratories FL, Inc., et
`
`al., C.A. No. 9:15-cv-81076-DMM (S.D. Fla.).
`
`
`LEAD AND BACKUP COUNSEL
`
`Lead Counsel
`
`Dianne B. Elderkin
`AKIN GUMP STRAUSS HAUER
`& FELD LLP
`Two Commerce Square
`2001 Market Street, Suite 4100
`Philadelphia, PA 19103
`Tel.: (215) 965-1340
`Fax: (215) 965-1210
`delderkin@akingump.com
`USPTO Registration No. 28,598
`
`
`
`
`Backup Counsel
`
`
`
`Barbara L. Mullin
`AKIN GUMP STRAUSS HAUER
`& FELD LLP
`Two Commerce Square
`2001 Market Street, Suite 4100
`Philadelphia, PA 19103
`Tel.: (215) 965-1243
`Fax: (215) 965-1210
`bmullin@akingump.com
`USPTO Registration No. 38,250
`
`Ruben H. Munoz
`AKIN GUMP STRAUSS HAUER
`& FELD LLP
`Two Commerce Square
`2001 Market Street, Suite 4100
`Philadelphia, PA 19103
`Tel.: (215) 965-1263
`Fax: (215) 965-1210
`rmunoz@akingump.com
`USPTO Registration No. 66,998
`
`
`
`Pursuant to 37 C.F.R. § 42.10(b), a Power of Attorney is being concurrently
`
`filed on December 18, 2015.
`
`3
`
`

`
`SERVICE INFORMATION
`
`Janssen consents to electronic service at the following email address:
`
`JANS-ZYTIGA@akingump.com
`
`Janssen may be served by postal mailing or hand-delivery as follows:
`
`Dianne B. Elderkin
`AKIN GUMP STRAUSS HAUER & FELD LLP
`Two Commerce Square
`2001 Market Street, Suite 4100
`Philadelphia, PA 19103
`Tel.: (215) 965-1340
`Fax: (215) 965-1210
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`/Dianne B. Elderkin/
`Dianne B. Elderkin
`Registration No. 28,598
`Counsel for Patent Owner
`
`Date: December 18, 2015
`
`
`
`
`
`
`
`
`
`4
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Janssen
`
`Oncology, Inc. Mandatory Notices was served on counsel of record on December
`
`18, 2015 by filing this document through the Patent Review Processing System, as
`
`well as delivering a copy via electronic mail to counsel of record for the Petitioner
`
`at the following addresses:
`
`William Hare
`Gabriela Materassi
`McNeeley Hare & War LLP
`bill@miplaw.com
`materassi@miplaw.com
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Dianne B. Elderkin/
`Dianne B. Elderkin
`Registration No. 28,598
`Counsel for Patent Owner
`
`5
`
`
`
`
`
`Date: December 18, 2015

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