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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`SANOFI-AVENTIS U.S. LLC and
`SANOFI-AVENTIS DEUTSCHLAND GMBH,
`Petitioners,
`
`v.
`
`
`
`ASTRAZENECA PHARMACEUTICALS LP and
`AMYLIN PHARMACEUTICALS, LLC,
`Patent Owners.
`
`
`
`Case No. IPR2016-00355
`Patent No. 8,951,962
`
`
`
`PATENT OWNERS’ MANDATORY NOTICES
`UNDER 37 C.F.R. § 42.8(a)(2)
`
`
`Patent Owners AstraZeneca Pharmaceuticals LP
`
`and Amylin
`
`Pharmaceuticals, LLC hereby submit the following mandatory notices pursuant to
`
`37 C.F.R. § 42.8(a)(2).
`
`A. Real Parties-In-Interest (37 C.F.R. § 42.8(b)(1))
`
`Pursuant to 37 C.F.R. § 42.8(b)(1), Patent Owners identify AstraZeneca
`
`Pharmaceuticals LP (an assignee of U.S. Patent No. 8,951,962 (the “’962 patent”)),
`
`Amylin Pharmaceuticals, LLC (an assignee of the ’962 patent), AstraZeneca AB,
`
`
`
`

`
`
`
`and AstraZeneca PLC.
`
`B. Related Matters (37 C.F.R. § 42.8(b)(2))
`
`The Patent Owners identify the following matters that may affect, or may be
`
`affected by, a decision in this proceeding:
`
` Sanofi-Aventis U.S. LLC, et al. v. AstraZeneca Pharmaceuticals LP, et
`al., No. 15-cv-662-GMS (D. Del.), a proceeding in which Patent
`Owners have asserted the ’962 patent against Petitioners by way of
`counterclaim. The other patents at issue in Case No. 15-cv-662 are
`U.S. Patent Nos. 6,902,744, 7,399,489, 7,521,423, 7,691,963, and
`8,445,647.
`
` Sanofi-Aventis U.S. LLC, et al. v. AstraZeneca Pharmaceuticals LP, et
`al., Case No. IPR2016-00353, in which Petitioners have filed a
`petition for inter partes review involving related U.S. Patent No.
`7,691,963.
`
` Sanofi-Aventis U.S. LLC, et al. v. AstraZeneca Pharmaceuticals LP, et
`al., Case No. IPR2016-00354, in which Petitioners have filed a
`petition for inter partes review involving related U.S. Patent No.
`8,445,647.
`
`C. Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3))
`
`Patent Owners designate the following counsel:
`
`Lead Counsel:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`David I. Berl (Reg. No. 72,751)
`Williams & Connolly LLP
`
`725 Twelfth St. NW
`Washington, DC 20005
`
`
`
`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Direct Phone: 202-434-5491
`Facsimile: 202-434-5029
`
`Back-up Counsel:
`
`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
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Powers of attorney appointing these attorneys to transact all business in this
`
`proceeding are submitted together with this mandatory notice information.
`
`D. Service Information (37 C.F.R. § 42.8(b)(4))
`
`Counsel for Patent Owners submits the following service information:
`
`
`(i)
`
`Electronic mail address:
`
`
`(ii) Postal mailing address:
`
`dberl@wc.com
`dgrossman@wc.com
`
`
`David I. Berl
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington D.C. 20005
`
`(iii) Hand-delivery address: David I. Berl
`Williams & Connolly LLP
` 725 Twelfth Street, N.W.
` Washington D.C. 20005
`
`
`
`
`202-434-5491
`
`
`
`(iv) Telephone number:
`
`Facsimile number:
`
`(v)
`
`
`Counsel for Patent Owners consent to electronic service by email at
`
`
`
`202-434-5029
`
`dberl@wc.com and dgrossman@wc.com.
`
`
`
`

`
`
`
`
`
`Dated: January 6, 2016
`
`
`
`
`
` Respectfully submitted, 
`
` 
`
`
`
` /David I. Berl/
`David I. Berl
`Reg. No. 72,751
`Williams & Connolly, LLP
`725 12th St., NW
`Washington, DC 20005
`Telephone: 202-434-5491
`Facsimile: 202-434-5029
`Email: dberl@wc.com
`
`Lead Counsel for Patent
`Owners
`
`
`
`
`
`

`
`
`
`
`
`CERTIFICATE OF SERVICE
`(37 C.F.R. § 42.6(e))
`The undersigned hereby certifies that the document above was served on
`
`this 6th day of January, 2016, on the Petitioners by delivering a copy via electronic
`
`mail to the following individuals at the email addresses below:
`
`Paul H. Berghoff
`Reg. No. 30,243
`berghoff@mbhb.com
`
`Joshua R. Rich
`Reg. No. 41,269
`rich@mbhb.com
`
`Andrew W. Williams
`Reg. No. 48,644
`williams@mbhb.com
`
`McDonnell Boehnen Hulbert & Berghoff LLP
`300 South Wacker Drive
`Chicago, Illinois 60606
`P: (312) 913-0001
`F: (312) 913-0002
`
`
`
`
`
` /David I. Berl/
`By:
`David I. Berl
`Lead Counsel for Patent
`Owners
`Registration No. 72,751
`
`Date: January 6, 2016
`
`   

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