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UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SANDOZ INC.,
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`Petitioner
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`v .
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`ELI LILLY AND COMPANY,
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`Patent Owner
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`
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`U.S. Patent 7,772,209 to Niyikiza
`Issued Date: Aug. 10, 2010
`Title: Antifolate Combination Therapies
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`
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`Inter Partes Review No. 2016-00318
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`PETITIONER SANDOZ INC.’S
`UPDATED MANDATORY NOTICES
`PURSUANT TO 37 C.F.R. § 42.8
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`

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`A. Real Party-In-Interest (UNCHANGED)
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`Sandoz Inc. is the real party-in-interest for the instant petition.
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`B. Related Matters (UPDATED)
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`1. Related Litigations
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`Petitioner is not aware of any reexamination certificates or pending
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`prosecution concerning the ’209 patent. Petitioner is a defendant in the following
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`litigation involving the ’209 patent: Eli Lilly & Co. v. Sandoz Inc., No. 1:14-cv-
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`2008 (S.D. Ind., filed December 5, 2014) (“Sandoz Litigation”). Sandoz has
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`timely filed this petition pursuant to 35 U.S.C. § 315(b) within one year of the date
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`“on which the petitioner . . . [was] served with [the] complaint alleging
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`infringement of the patent” – December 15, 2014. Ex. 1053, Return of Service.
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`The Patent Owner has also asserted the ’209 patent in the following
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`additional litigations in which Petitioner was not and is not a party: Eli Lilly & Co.
`
`v. Teva Parenteral Medicines, Inc., No. 1:10-cv-1376 (S.D. Ind., filed October 29,
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`2010) (“Teva Litigation”); Eli Lilly & Co. v. APP Pharmaceuticals, LLC, No.
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`1:11-cv-942 (S.D. Ind., filed July 15, 2011); Eli Lilly & Co. v. Accord Healthcare,
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`Inc., USA, No. 1:12-cv-86 (S.D. Ind., filed January 20, 2012); Eli Lilly & Co. v.
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`Apotex Inc., No. 1:12-cv-499 (S.D. Ind., filed April 17, 2012); Eli Lilly & Co. v.
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`Accord Healthcare Inc., USA, No. 1:13-cv-335 (S.D. Ind., filed February 28,
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`2013); Eli Lilly & Co. v. Sun Pharmaceutical Industries Ltd., No. 1:13-cv-1469
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`
`
`2
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`

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`(S.D. Ind., filed September 13, 2013); Eli Lilly & Co. v. Glenmark Generics Inc.,
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`USA, No. 1:14-cv-104 (S.D. Ind., filed January 23, 2014); Eli Lilly & Co. v. Nang
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`Kuang Pharmaceutical Co., Ltd., No. 1:14-cv-1647 (S.D. Ind., filed October 8,
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`2014); Eli Lilly & Co. v. Fresenius Kabi USA, LLC, No. 1:15-cv-96 (S.D. Ind.,
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`filed January 23, 2015); Eli Lilly & Co. v. Mylan Laboratories Ltd., No. 1:15-cv-
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`1083 (S.D. Ind., filed July 10, 2015); Eli Lilly & Co. v. Emcure
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`Pharmaceuticals Ltd., No. 1:15-cv-1244 (S.D. Ind., filed August 7, 2015); and Eli
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`Lilly & Co. v. Dr. Reddy’s Laboratories, Ltd. et al., No. 1:16-cv-308 (S.D. Ind.,
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`filed Feb. 5, 2016).
`
`
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`Petitioner newly identifies the following additional litigation in which the
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`Patent Owner has asserted the ’209 patent and in which Petitioner was not and is
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`not a party: Eli Lilly & Co. v. Biocon Ltd., No. 1:16-cv-469 (S.D. Ind., filed Feb.
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`26, 2016).
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`2. Related Proceedings Before the Board
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`The ’209 patent has also been challenged before the Board in the following
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`proceedings in which Petitioner was not and is not a party: Accord Healthcare,
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`Inc., USA v. Eli Lilly & Co., IPR2013-356 (PTAB, filed June 14, 2013); Neptune
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`Generics, LLC v. Eli Lilly & Co., IPR2016-237 (PTAB, filed November 24, 2015);
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`and Neptune Generics, LLC v. Eli Lilly & Co., IPR2016-240 (PTAB, filed
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`November 24, 2015). On October 1, 2013, the Board denied institution of Accord
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`3
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`

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`Healthcare Inc.’s petition in IPR2013-356 because the petition was not filed within
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`the time limit imposed by 35 U.S.C. § 315(b). Neptune Generics, LLC’s
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`(“Neptune”) two petitions are pending before the Board.
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`C. Lead and Back-Up Counsel (UNCHANGED)
`
`
`Lead Counsel
`Ralph J. Gabric (Reg. No. 34,167)
`rgabric@brinksgilson.com
`Brinks Gilson & Lione
`Suite 3600 NBC Tower
`455 Cityfront Plaza Drive
`Chicago IL 60611-5599
`T: 312-321-4200, F: 312-321-4299
`
`
`
`Back-Up Counsel
`Laura Lydigsen
`(pro hac vice motion to be filed)
`llydigsen@brinksgilson.com
`Brinks Gilson & Lione
`Suite 3600 NBC Tower
`455 Cityfront Plaza Drive
`Chicago IL 60611-5599
`T: 312-321-4200, F: 312-321-4299
`
`Bryan T. Richardson, Ph.D. (Reg. No.
`70,572)
`brichardson@brinksgilson.com
`Brinks Gilson & Lione
`4721 Emperor Boulevard
`Suite 220
`Durham, NC 27703-8580
`T: 919-998-5700, F: 919-998-5701
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`
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`D. Service Information (UNCHANGED)
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`Please address all correspondence to the lead and backup counsel at the
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`contact information above. Petitioner also consents to service by email at
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`rgabric@brinksgilson.com and llydigsen@brinksgilson.com.
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`4
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`

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`Dated: March 18, 2016
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`Respectfully submitted,
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` /s/ Ralph J. Gabric
`Ralph J. Gabric (Reg. No. 34,167)
`Laura L. Lydigsen
`Bryan T. Richardson, Ph.D. (Reg. No.
`70,572)
`Brinks Gilson & Lione
`NBC Tower – Suite 3600
`455 N. Cityfront Plaza Dr.
`Chicago, Illinois 60611
`
`
`
`5
`
`

`
`CERTIFICATE OF SERVICE
`
`I hereby certify that true and correct copies of the foregoing Petitioner Sandoz
`Inc.’s Updated Mandatory Notices Under 37 C.F.R. § 42.8 were served on March
`18, 2016 via electronic mail to the following individuals at the email addresses
`below.
`
`Dov P. Grossman (Reg. No. 72,525)
`Williams & Connolly LLP
`725 Twelfth St. NW
`Washington DC 20005
`Direct Phone: 202-434-5812
`Facsimile: 202-434-5029
`dgrossman@wc.com
`
`David M. Krinsky (Reg. No. 72,339)
`Williams & Connolly LLP
`725 Twelfth St. NW
`Washington DC 20005
`Direct Phone: 202-434-5338
`Facsimile: 202-480-8302
`dkrinsky@wc.com
`
`James P. Leeds (Reg. No. 35,241)
`Eli Lilly and Company
`Lilly Corporate Center
`Indianapolis, IN 46285
`Direct Phone: 317-276-1667
`Facsimile: 317-277-6534
`leeds_james@lilly.com
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`Dated: March 18, 2016
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`
`
`
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`
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`/s/ Ralph J. Gabric
`Ralph J. Gabric (Reg. No. 34,167)
`Laura L. Lydigsen
`Bryan T. Richardson, Ph.D. (Reg. No.
`70,572)
`Brinks Gilson & Lione
`NBC Tower – Suite 3600
`455 N. Cityfront Plaza Dr.
`Chicago, Illinois 60611

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