`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_________________
`
`GENERICO, LLC and
`FLAT LINE CAPITAL, LLC,
`Petitioners
`v.
`DR. FALK PHARMA GmbH,
`Patent Owner.
`_________________
`
`Case IPR2016-00297
`Patent 8,865,688
`__________________________________________________________________
`
`PATENT OWNER’S MANDATORY NOTICE INFORMATION
`
`
`
`Case IPR2016-00297
`Patent 8,865,688
`
`Pursuant to 37 C.F.R. § 42.8(b), Patent Owner, Dr. Falk Pharma GmbH,
`
`submits the following information:
`
`Real Party-In-Interest
`
`Pursuant to the requirement of 37 C.F.R. § 42.8(b)(1), the undersigned state
`
`that Dr. Falk Pharma GmbH (“Dr. Falk”) and Salix Pharmaceuticals, Ltd.
`
`(“Salix)”) are the real parties-in-interest. Dr. Falk is a corporation existing under
`
`the laws of Germany, having its principal place of business at Leinenweberstr. 5,
`
`79108 Freiburg im Breisgau, Germany. Salix Pharmaceuticals, Ltd. is a wholly-
`
`owned subsidiary of Valeant Pharmaceuticals International, Inc. Dr. Falk owns by
`
`assignment the entire right, title and interest in U.S. Patent No. 8,865,688 (“the
`
`“’688 patent”) by virtue of an Assignment of rights from the inventor, William
`
`Forbes, to Salix (Reel/Frame 023492-0947 and 026480-230) and Lorin Johnson, to
`
`Salix (Reel/Frame 36224-248), and from Salix to Dr. Falk (Reel/Frame 026480-
`
`0218).
`
`The assignments were recorded with the United States Patent and
`
`Trademark Office on November 9, 2009, June 20, 2011 and July 31, 2015. Salix is
`
`currently the exclusive licensee of the ‘688 patent.
`
`Related Matters
`
`Pursuant to 37 C.F.R. § 42.8(b)(2), the undersigned state that U.S. Patent
`
`No. 8,865,688 is currently the subject of
`
`two, currently-pending patent
`
`infringement lawsuits in District Court: Salix Pharmaceuticals, Inc. et al. v. Novel
`
`2
`
`
`
`Case IPR2016-00297
`Patent 8,865,688
`
`Laboratories,
`
`Inc., No.
`
`1-15-cv-00213
`
`(Consolidated)
`
`(D. Del.);
`
`Salix
`
`Pharmaceuticals, Inc. et al v. Mylan Pharmaceuticals, Inc. et al, No. 1-15-cv-
`
`00109 (N.D. W.Va.).
`
`Lead and Backup Counsel
`
`Lead Counsel
`Mary W. Bourke
`Registration No. 30,982
`Womble Carlyle Sandridge & Rice LLP
`222 Delaware Ave., Suite 1501
`Wilmington, DE 19801
`T: (302) 252-4333
`F: (302) 252-4330
`mbourke@wcsr.com
`
`Backup Counsel
`Tryn Stimart
`(pro hac vice to be filed)
`Womble Carlyle Sandridge & Rice LLP
`8065 Leesburg Pike, 4th Floor
`Tysons Corner, VA 22182-2738
`T: (703) 790-7924
`F: (703) 918-2293
`tstimart@wcsr.com
`
`Preston H. Heard
`Womble Carlyle Sandridge & Rice LLP
`271 17th St. N.W., Suite 2400
`Atlanta ,GA 30363
`T: (404) 888-7366
`F: (404) 879-2966
`PHeard@wcsr.com
`Registration No. 64,675
`
`Service Information
`
`Pursuant to 37 C.F.R. § 42.8(b)(4), please address all correspondence to lead
`
`and backup counsel at the above addresses. Patent Owner consents to service by
`
`email at the above-specified email addresses.
`
`3
`
`
`
`Case IPR2016-00297
`Patent 8,865,688
`
`Dated: December 30, 2015
`
`Respectfully submitted,
`
`/Preston H. Heard/
`Preston H. Heard
`Registration No. 64,675
`Backup Counsel for Patent Owner
`
`4
`
`
`
`Case IPR2016-00297
`Patent 8,865,688
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing PATENT
`OWNER’S MANDATORY NOTICE INFORMATION was served on Petitioner
`by filing this document through the Patent Review Processing System as well as by
`delivering a copy via email to the following:
`
`Zachary D. Silbersher
`Kroub, Silbersher & Kolmykov PLLC
`305 Broadway 7th Fl.
`New York, NY 10007
`Tel: (212) 323-7442
`zsilbersher@kskiplaw.com
`(Reg. No. 62,090)
`
`Gaston Kroub
`Kroub, Silbersher & Kolmykov PLLC
`305 Broadway 7th Fl.
`New York, NY 10007
`Tel: (212) 323-7442
`gkroub@kskiplaw.com
`(Reg. No. 51,903)
`
`Dated: December 30, 2015
`
`/Preston H. Heard/
`Preston H. Heard
`Registration No. 64,675
`
`5
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